official notices (pct gazette) - wipo...the publication official notices (pct gazette) is part of...

The publication Official Notices (PCT Gazette) is part of the Gazette published by the International Bureau of the World Intellectual Property Organization in accordance with Article 55(4) of the Patent Cooperation Treaty (PCT) and Rule 86 of the Regulations under the PCT.

1

OFFICIAL NOTICES (PCT GAZETTE) 9 January 2020

Notices and Information of a General Character

Page

International Searching Authorities International Preliminary Examining Authorities IL Israel 2

Information on Contracting States BY Belarus 3

Fees Payable under the PCT CR Costa Rica 3 ID Indonesia 3 IL Israel 4

Receiving Offices ID Indonesia 4 UG Uganda 4

WIPO WORLD INTELLECTUAL PROPERTY ORGANIZAT ION

Official Notices (PCT Gazette) – 9 January 2020

2

INTERNATIONAL SEARCHING AUTHORITIES INTERNATIONAL PRELIMINARY EXAMINING AUTHORITIES

IL Israel

Agreement between the Government of Israel and the International Bureau of the World Intellectual Property Organization1 - Amendment to Annex D

The Israel Patent Office has notified the International Bureau, in accordance with Article 11(3)(iii) of the above-mentioned Agreement, of amendments to Part I of Annex D thereof. These amendments will enter into force on 1 March 2020. The amended Annex D will read as follows:

“Annex D Fees and Charges

Part I. Schedule of Fees and Charges

Kind of fee or charge Amount (Israel new shekel) Search fee (Rule 16.1(a)) 3,582 Additional fee (Rule 40.2(a)) 3,582 Preliminary examination fee (Rule 58.1(b)) 1,535 Late payment fee for preliminary examination [No change] Additional fee (Rule 68.3(a)) 1,535 Late furnishing fee (Rules 13ter.1(c) and 13ter.2) 460 Cost of copies (Rules 44.3(b), 71.2(b), 94.1ter and 94.2), per document [No change]

Part II. [No change]”

1 Available on the WIPO website at: www.wipo.int/pct/en/texts/agreements/ag_il.pdf


3

INFORMATION ON CONTRACTING STATES

BY Belarus

The National Center of Intellectual Property (Belarus) has notified the International Bureau of changes to its telephone and facsimile numbers, as well as to its e-mail and Internet addresses, which are now as follows:

Telephone: (375-17) 272 46 96

Facsimile: (375-17) 272 98 34

E-mail: [email protected] [email protected]

Internet: www.ncip.by

[Updating of Annex B1(BY) of the PCT Applicant’s Guide]

FEES PAYABLE UNDER THE PCT

CR Costa Rica

The Registry of Industrial Property (Costa Rica) has notified the International Bureau of new amounts of fees, in US dollars (USD), payable to it as receiving Office since 18 December 2019, as follows:

Transmittal fee (PCT Rule 14): USD 212 (online) USD 289 (on paper) Fee for priority document (PCT Rule 17.1(b)): USD 29 Fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d)): USD 144

[Updating of Annex C(CR) of the PCT Applicant’s Guide]

ID Indonesia

The Directorate General of Intellectual Property (Indonesia) has notified the International Bureau of a new amount of the fee for the priority document (PCT Rule 17.1(b)), in Indonesian rupiah (IDR), payable to it in its capacity as receiving Office. This amount, applicable since 3 May 2019, is IDR 300,000.

[Updating of Annex C(ID) of the PCT Applicant’s Guide]


4

IL Israel

The Israel Patent Office has notified the International Bureau of new amounts of fees, in new Israeli shekels (ILS), payable to it as International Searching Authority and applicable from 1 March 2020, as follows:

Search fee (PCT Rule 16): ILS 3,582 Additional search fee (PCT Rule 40.2): ILS 3,582 Late furnishing fee (PCT Rule 13ter.1(c)): ILS 460

[Updating of Annex D(IL) of the PCT Applicant’s Guide]

Furthermore, the Office also notified new amounts of fees, in new Israeli shekels (ILS), payable to it as International Preliminary Examining Authority and applicable from 1 March 2020, as follows:

Preliminary examination fee (PCT Rule 58.1(b)): ILS 1,535 Additional preliminary examination fee (PCT Rule 68.3(a)): ILS 1,535 Late furnishing fee (PCT Rule 13ter.2): ILS 460

[Updating of Annex E(IL) of the PCT Applicant’s Guide]

RECEIVING OFFICES

ID Indonesia

The Directorate General of Intellectual Property (Indonesia) has notified the International Bureau of a change concerning the number of paper copies of the international application required by it – one copy is now required, instead of two.

[Updating of Annex C(ID) of the PCT Applicant’s Guide]

UG Uganda

The Uganda Registration Services Bureau (URSB) has specified the European Patent Office (EPO), in addition to the Intellectual Property Office of Singapore, as competent International Searching and International Preliminary Examining Authority for international applications filed with the URSB by nationals and residents of Uganda, with effect since 27 November 2019.

[Updating of Annex C(UG) of the PCT Applicant’s Guide]


5



Page

Fees Payable under the PCT EG Egypt 6 EP European Patent Organisation 6



6


EG Egypt

The Egyptian Patent Office notified the International Bureau of a new amount, in Egyptian pounds (EGP), of the examination fee component of its national fee, payable to the Office in its capacity as designated (or elected) Office. This amount, applicable since 7 November 2017, is EGP 17,000. Students are exempt from paying this fee.

[Updating of the National Chapter, Summary (EG) of the PCT Applicant’s Guide]

EP European Patent Organisation

The European Patent Office (EPO) has notified the International Bureau of a new amount, in euros (EUR), of the filing fee component of its national fee for non-online filings. This amount, payable to the Office in its capacity as designated (or elected) Office and applicable since 1 April 2019, is EUR 250.

[Updating of the National Chapter, Summary (EP) of the PCT Applicant’s Guide]


7



Page

Information on Contracting States ID Indonesia 8

Fees Payable under the PCT ID Indonesia 8 IL Israel 8



8


ID Indonesia

The Directorate General of Intellectual Property (Indonesia) has notified the International Bureau of changes concerning facsimile services and the filing of documents by means of telecommunication (PCT Rule 92.4) — the Office has discontinued the use of its facsimile services and will no longer accept the filing of documents by fax.

[Updating of Annex B1(ID) of the PCT Applicant’s Guide]


ID Indonesia

The Directorate General of Intellectual Property (Indonesia) has notified the International Bureau of new amounts of several components of the national fee, in Indonesian rupiah (IDR), payable to the Office in its capacity as designated (or elected) Office. These amounts, applicable since 3 May 2019, are as follows:

National fee: Claim fee for each claim in excess of 10: IDR 75,000 Substantive examination fee: IDR 3,000,000

[Updating of the National Chapter, Summary (ID) of the PCT Applicant’s Guide]

IL Israel

In accordance with PCT Rule 16.1(d), new equivalent amounts, in Swiss francs (CHF), euros (EUR) and US dollars (USD), have been established for the search fee for an international search carried out by the Israel Patent Office. These amounts, applicable from 1 March 2020, are CHF 1,009, EUR 932 and USD 1,036, respectively.

[Updating of Annex D(IL) of the PCT Applicant’s Guide]


9



Page

International Searching Authorities International Preliminary Examining Authorities IL Israel – Corrigendum 10

Fees Payable under the PCT KG Kyrgyzstan 11

Erroneously Filed Elements and Parts: Notifications by Receiving Offices of Incompatibility with National Laws under PCT Rule 20.8(a-bis) EP European Patent Organisation – Corrigendum 12

Erroneously Filed Elements and Parts: Notifications by Designated Offices of Incompatibility with National Laws under PCT Rule 20.8(b-bis) EP European Patent Organisation 12

Availability of Priority Documents from Digital Libraries: Notifications by Participating Offices and Authorities NO Norway 13



10


IL Israel – Corrigendum

Agreement between the Government of Israel and the International Bureau of the World Intellectual Property Organization1 - Amendment to Annex D

The indication of “Late furnishing fee” in Part I of Annex D of the above-mentioned Agreement, as published in the Official Notices (PCT Gazette) of 9 January 2020, page 2, was erroneous. The correct indication is: “Late furnishing fee for sequence listings”.

In addition, the translation into French of the indication “Cost of copies” was also erroneous. The corrected French version of Annex D is published in the Notifications officielles (Gazette du PCT)2 of 30 January 2020, page 10.

As from 1 March 2020, the amended Annex D will read as follows:



Kind of fee or charge Amount (Israel new shekel) Search fee (Rule 16.1(a)) 3,582 Additional fee (Rule 40.2(a)) 3,582 Preliminary examination fee (Rule 58.1(b)) 1,535 Late payment fee for preliminary examination [No change] Additional fee (Rule 68.3(a)) 1,535 Late furnishing fee for sequence listings (Rules 13ter.1(c) and 13ter.2) 460 Cost of copies (Rules 44.3(b), 71.2(b), 94.1ter and 94.2), per document [No change]


1 Available on the WIPO website at: www.wipo.int/pct/en/texts/agreements/ag_il.pdf 2 Available on the WIPO website at: https://www.wipo.int//pct/fr/official_notices/officialnotices.pdf


11


KG Kyrgyzstan

The State Service of Intellectual Property and Innovation under the Government of the Kyrgyz Republic has notified the International Bureau of an amount of the transmittal fee (PCT Rule 14), in Kyrgyz som (KGS), payable to the Office in its capacity as receiving Office. This amount, applicable since 3 October 2016, is KGS 4,000. This fee is reduced by 90% if the applicant is an individual.

For non-residents of Kyrgyzstan, the equivalent amount of the fee can be paid in a freely convertible currency, in accordance with the exchange rate of the National Bank of the Kyrgyz Republic applicable on the date of payment.

[Updating of Annex C(KG) of the PCT Applicant’s Guide]

ERRONEOUSLY FILED ELEMENTS AND PARTS: NOTIFICATIONS BY RECEIVING OFFICES OF INCOMPATIBILITY WITH NATIONAL LAWS UNDER PCT RULE 20.8(A-BIS)

Corrigendum: The notification published in the Official Notices (PCT Gazette) of 19 December 2019 (pages 199 and 200) concerning incompatibility with the law applied by the European Patent Office (EPO) in its capacity as receiving Office, under new PCT Rule 20.8, contained incorrect references to Rule 20.8(b-bis). The said notification is hereby corrected and republished, as follows:

During its fifty-first (22nd ordinary) session, held in Geneva from 30 September to 9 October 2019, the Assembly of the International Patent Cooperation Union (PCT Union) unanimously adopted, among others, new Rule 20.5bis3 of the PCT Regulations concerning erroneously filed elements and parts of international applications, as well as new Rule 20.8(a-bis), concerning incompatibility of Rules 20.5bis(a)(ii)4 and 20.5bis(d)5 with the national law applied by receiving Offices. These new Rules, among others, will enter into force on 1 July 2020.

3 The complete text of Rule 20.5bis is reproduced in Annex III of document number PCT/A/51/2, which is available

online at: https://www.wipo.int/edocs/mdocs/govbody/en/pct_a_51/pct_a_51_2.pdf 4 New Rule 20.5bis(a)(ii) states: “Where, in determining whether the papers purporting to be an international

application fulfil the requirements of Article 11(1), the receiving Office finds that an entire element referred to in Article 11(1)(iii)(d) or (e) has or appears to have been erroneously filed, or that a part of the description, claims or drawings has or appears to have been erroneously filed, including the case where all drawings have or appear to have been erroneously filed (“erroneously filed element or part”), it shall promptly invite the applicant, at the applicant’s option to confirm, in accordance with Rule 20.6(a), that the correct element or part was incorporated by reference under Rule 4.18 and to make observations, if any, within the applicable time limit under Rule 20.7. If that time limit expires after the expiration of 12 months from the filing date of any application whose priority is claimed, the receiving Office shall call that circumstance to the attention of the applicant.”

5 New Rule 20.5bis(d) states: “Where, following an invitation under paragraph (a) or otherwise, a correct element or part is, under Rule 20.6(b), considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, the erroneously filed element or part concerned shall remain in the application, and the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2(b) and (c) and as provided for in the Administrative Instructions.”


12

New Rule 20.8(a-bis) states: “If, on October 9, 2019, any of Rules 20.5bis(a)(ii) and (d) are not compatible with the national law applied by the receiving Office, the Rules concerned shall not apply to an international application filed with that receiving Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 9, 2020. The information received shall be promptly published by the International Bureau in the Gazette.”


In accordance with new PCT Rule 20.8(a-bis), which will enter into force on 1 July 2020, the European Patent Office (EPO), in its capacity as receiving Office, has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) cannot be considered to be compatible with the legal framework of the Convention on the Grant of European Patents (EPC).

ERRONEOUSLY FILED ELEMENTS AND PARTS: NOTIFICATIONS BY DESIGNATED OFFICES OF INCOMPATIBILITY WITH NATIONAL LAWS UNDER PCT RULE 20.8(B-BIS)

During its fifty-first (22nd ordinary) session, held in Geneva from 30 September to 9 October 2019, the Assembly of the International Patent Cooperation Union (PCT Union) unanimously adopted, among others, new Rule 20.5bis6 of the PCT Regulations concerning erroneously filed elements and parts of international applications, as well as new Rule 20.8(b-bis), concerning incompatibility of Rules 20.5bis(a)(ii)7 and 20.5bis(d)8 with the national law applied by designated Offices. These new Rules, among others, will enter into force on 1 July 2020.

New Rule 20.8(b-bis) states: “If, on October 9, 2019, any of Rules 20.5bis(a)(ii) and (d) are not compatible with the national law applied by the designated Office, the Rules concerned shall not apply in respect of that Office in relation to an international application in respect of which the acts referred to in Article 22 have been performed before that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 9, 2020. The information received shall be promptly published by the International Bureau in the Gazette.”


In accordance with new PCT Rule 20.8(b-bis), which will enter into force on 1 July 2020, the European Patent Office (EPO), in its capacity as designated Office, has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) cannot be considered to be compatible with the legal framework of the Convention on the Grant of European Patents (EPC).

6 See footnote 3. 7 See footnote 4. 8 See footnote 5.


13

AVAILABILITY OF PRIORITY DOCUMENTS FROM DIGITAL LIBRARIES: NOTIFICATIONS BY PARTICIPATING OFFICES AND AUTHORITIES

In order to facilitate access to priority documents, the International Bureau established the Digital Access Service for Priority Documents (“DAS”), based on a decision taken in 2006 by the Paris Union Assembly, the PLT Assembly and the PCT Union Assembly.

Since April 2009, the International Bureau, and any Office or Authority having the adequate legal and technical requirements in place, is able to participate in DAS, either as an office of first filing (“depositing Office”) or as an office of second filing (“accessing Office”), or both, in order to facilitate access to priority documents (PCT Rule 17) in a wide variety of media and formats.

Notifications made under paragraphs 10 and 12 of the Framework Provisions for the Digital Access for Priority Documents or Section 715(a)(i) or (b) of the Administrative Instructions under the PCT are published by the International Bureau at: www.wipo.int/das/en/participating_offices.html.

NO Norway

In accordance with paragraphs 10 and 12 of the Framework Provisions of the Digital Access for Priority Documents, the Norwegian Industrial Property Office has notified the International Bureau of its participation in DAS, as depositing Office and accessing Office, with effect since 1 January 2020.

[Updating of Annex B1(NO) of the PCT Applicant’s Guide]


14

OFFICIAL NOTICES (PCT GAZETTE) 6 February 2020


Page

Information on Contracting States SA Saudi Arabia 15

Fees Payable under the PCT TN Tunisia 15 US United States of America 15

Deposits of Microorganisms and Other Biological Material: Institutions with Which Deposits May Be Made IT Italy 16


Official Notices (PCT Gazette) – 6 February 2020

15


SA Saudi Arabia

The Saudi Patent Office (SPO) has notified the International Bureau of changes to the name of the Office, as well as to its location and mailing address, telephone numbers, facsimile number, and e-mail and Internet addresses, as follows:

Name of Office: Saudi Authority for Intellectual Property (SAIP)

Location and mailing address: As Sahafah, Olaya St. 6531, 3059 Riyadh 13321 Saudi Arabia

Telephone: (966-11) 280 59 76 (966-11) 280 60 09

Facsimile machine: (966-11) 280 60 02

E-mail: [email protected]

Internet: www.saip.gov.sa

[Updating of Annex B1(SA) of the PCT Applicant’s Guide]


TN Tunisia

The National Institute for Standardization and Industrial Property (INNORPI) (Tunisia) has notified the International Bureau of a new amount of the transmittal fee (PCT Rule 14), in Tunisian dinars (TND), payable to the Office in its capacity as receiving Office. This amount, applicable since 2 January 2020, is TND 100.

[Updating of Annex C(TN) of the PCT Applicant’s Guide]

US United States of America

Pursuant to PCT Rule 16.1(d), new equivalent amounts in New Zealand dollars (NZD) have been established for the search fee for an international search carried out by the United States Patent and Trademark Office (USPTO). These amounts, applicable from 1 April 2020, are NZD 3,135 for an entity other than a small or micro entity, NZD 1,567 for a small entity and NZD 784 for a micro entity.

[Updating of Annex D(US) of the PCT Applicant’s Guide]


16

DEPOSITS OF MICROORGANISMS AND OTHER BIOLOGICAL MATERIAL: INSTITUTIONS WITH WHICH DEPOSITS MAY BE MADE

IT Italy

The Italian Patent and Trademark Office has notified the International Bureau of a change in the name of the Advanced Biotechnology Center (ABC), an international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, with which deposits of microorganisms and other biological material may be made. The new name of the authority is IRCCS Ospedale Policlinico San Martino.

[Updating of Annex L of the PCT Applicant’s Guide]


17



Page

Fees Payable under the PCT CA Canada 18

Designated (or Elected) Offices CA Canada 19 CR Costa Rica 20

Filing and Processing in Electronic Form of International Applications: Notification by Receiving Offices UG Uganda 20



18


CA Canada

The Canadian Intellectual Property Office has notified the International Bureau of new components of its national fee, in Canadian dollars (CAD), payable to the Office in its capacity as designated (or elected) Office. These amounts, applicable since 30 October 2019, are as follows:

National fee: Additional fee for reinstatement of rights (late entry into the national phase): CAD 200 Additional fee for late payment under subsection 154(4) of the Canadian Patent Rules: CAD 150

Furthermore, the Office notified changes to the relevant provisions of its national law concerning an applicant’s entitlement to pay the reduced amount of the basic national fee as a “small entity”. In order to be entitled to pay the reduced fee, a signed “small entity” declaration1 compliant with subsection 44(3) of the Canadian Patent Rules must be made by the applicant or the applicant’s agent, within the applicable time limit set out in subsections 154(1)(c)(i), 154(2)(a), 154(3)(a)(iii)(A), 154(3)(b)(i)(A), 154(3)(b)(ii)(A) or 80(1)(a) and 80(2) of Canadian Patent Rules.

In addition, the Office notified a change in the time limits for payment of the maintenance fee in respect of each one-year period, due at the time of entry into the national phase, where that entry is effected on or after the second (or possibly third) anniversary of the international filing date. With effect since 30 October 2019, where PCT Article 22 or 39(1) applies, this fee is due:

– within 24 months from the international filing date, or within 30 months from the priority date if that time limit expires later; or

– within 12 months after the 30-month deadline, provided the applicant pays the additional fee for late entry into the national phase.

[Updating of the National Chapter, Summary (CA) of the PCT Applicant’s Guide]

1 This declaration should preferably follow the form of the declaration set out in the PCT Applicant’s Guide, National

Phase, Annex CA.II.


19

DESIGNATED (OR ELECTED) OFFICES

CA Canada

The Canadian Intellectual Property Office has notified the International Bureau of changes to the requirements for late entry into the national phase. Late entry into the national phase is still possible (up to 12 months after the 30-month deadline (30 months from the priority date)); however, since 30 October 2019, applicants must pay the fee for reinstatement of rights and meet the other requirements outlined in subsection 154(3) of the Canadian Patent Rules for the reinstatement of rights (late entry into the national phase).

Furthermore, the Office notified several changes to its special requirements under PCT Rule 51bis. Since 30 October 2019, the complete list of these special requirements is as follows:

– The name and postal address of each inventor. – A statement that either (i) the applicant/applicants is/are entitled to apply for a

patent, or (ii) the applicant is the sole inventor or, if there are joint applicants, that the applicants are all inventors and the sole inventors.

– If the Commissioner reasonably doubts that the person who entered the national phase is the applicant of the international application or the legal representative, the Commissioner will require evidence to establish ownership rights in the international application.

An applicant may provide documentation2 with the request to enter the national phase establishing that the person who entered the national phase is the applicant of the international application or the legal representative.

– Appointment of an agent if the applicant is not the inventor. If the appointed agent does not reside in Canada, the appointment by the agent

of an agent who resides in Canada to be the associate agent. Evidence of the consent of the appointment of the agent when the document

appointing that agent is not submitted by the latter.

[Updating of the National Chapter, Summary (CA) of the PCT Applicant’s Guide]

2 Such documentation may include: Form PCT/IB/306, a document effecting the transfer of rights, or a change of

name document.


20

CR Costa Rica

The Registry of Industrial Property (Costa Rica) has notified the International Bureau of changes to the conditions for reduction of the filing fee component of the national fee. Since 18 December 2019, the filing fee is reduced by 70% where the international application has been filed by natural persons, micro or small enterprises (as defined in Law No. 8262 of Costa Rica), public institutions of higher education, or public institutes for scientific or technology research.

Together with the request for reduction of the fee, the applicant must provide, in addition to the proof of payment, the following documents:

– a sworn statement in which the applicant declares that he is entitled to the reduction;

– a copy of the identification card (“cédula de identidad”) in the case of a natural person; or

– a copy of the corporation card (“cédula jurídica”) in the case of a legal person.

To proceed with the registration of the transfer of rights to a third party that is not entitled to the reduction, the latter must pay the remaining 70% of the fee that was not initially paid by the assignor. In addition, as from the date of transfer to a third party, the assignee must pay the total amount of the annual fees due to maintain the validity of the patent.

[Updating of the National Chapter, Summary (CR) of the PCT Applicant’s Guide]

FILING AND PROCESSING IN ELECTRONIC FORM OF INTERNATIONAL APPLICATIONS: NOTIFICATION BY RECEIVING OFFICES

UG Uganda

Since 7 January 2002, any receiving Office having the adequate technical systems in place is able to accept the filing of international applications in electronic form in accordance with Part 7 and Annex F of the Administrative Instructions under the PCT containing, respectively, the legal framework and technical standard necessary to enable the implementation of filing and processing in electronic form of international applications, as provided for under PCT Rule 89bis.1.

The Uganda Registration Services Bureau (URSB), in its capacity as receiving Office, has notified the International Bureau, under PCT Rules 89bis.1(d) and 89bis.2 and pursuant to Sections 710(a) and 713 of the Administrative Instructions under the PCT, that it is prepared to receive and process international applications in electronic form with effect from 15 April 2020, as follows:


21

“As to electronic document formats (Section 710(a)(i)):

– XML (in general; see Annex F, section 3.1.1.1) – WIPO Standard ST.25 (for sequence listings; see Annex F, section 3.1.1.2, and Annex C) – PDF (for files that are referenced by XML files within the international application; see Annex F, section 3.1.2) – TIFF (for files that are referenced by XML files within the international application; see Annex F, section 3.1.3.1) – JPEG (for files that are referenced by XML files within the international application; see Annex F, section 3.1.3.2)

As to means of transmittal (Section 710(a)(i)):

– online filing (see Annex F, section 5 and Appendix III, section 2(d))

As to electronic document packaging (Section 710(a)(i)):

– WASP (Wrapped and Signed Package; see Annex F, section 4.2.1)

As to electronic filing software (Section 710(a)(i)):

– ePCT-Filing

As to types of electronic signature (Section 710(a)(i)):

– facsimile and text string types of signatures (see Annex F, sections 3.3.1 to 3.3.2) – enhanced electronic signature (see Annex F, section 3.3.4)

As to conditions, rules and procedures relating to electronic receipt (Section 710(a)(ii)):

The acknowledgement of receipt of any purported international application filed in electronic form with the Office will contain, in addition to the mandatory information required under Section 704(a)(i) to (iv), the names of the electronic files received (see Section 704(a)(v)).

The Office will make every effort to accept an international application in electronic form. It is only if the application is not sent in accordance with the E-filing interoperability protocol (see Annex F, section 5.1) that no acknowledgement of receipt will be generated. Other errors, such as the use of outdated certificates (see Annex F, Appendix II, section 4.4.7), applications infected by viruses or other forms of malicious logic (see Section 708(b)) or certain missing files, are notified to the applicant by inclusion in the notification of receipt.

Where it appears that the notification of receipt sent to the applicant by electronic means of transmittal was not successfully transmitted, the Office will promptly retransmit the notification of receipt by the same or another means (see Section 709(b)).


22

As to methods of online payment (Section 710(a)(ii)):

Online payment is not available.

As to details concerning help desks (Section 710(a)(ii)):

The Office has put in place a help desk to answer questions from users of the service. The help desk may be contacted:

– by telephone at: (256-41) 733 80 00 (256-41) 733 81 00 – by e-mail at: [email protected]

As to the kinds of documents which may be transmitted to the Office in electronic form (Section 710(a)(iii)):

– international applications – subsequently filed documents for international applications, to the extent supported by the relevant software.

As to the filing of documents in pre-conversion format (Section 710(a)(iv)):

The Office will accept the filing of documents in any pre-conversion format together with the international application.

As to procedures for notification of applicants and procedures which applicants may follow as alternatives when the electronic systems of the Office are not available (Section 710(a)(v)):

In case of failure of the electronic systems when an international application is filed with it, the Office will use all means available, such as fax or e-mail, to inform the applicant about procedures to follow as alternatives.

The Office will provide information concerning the availability of the online filing system on its website (www.ursb.go.ug).

As to the certification authorities that are accepted by the Office and the electronic addresses of the certificate policies under which certificates are issued (Section 710(a)(vi)):

– WIPO customer CA (www.wipo.int/pct-safe/en/certificates.htm)

As to the procedures relating to access to the files of international applications filed or stored in electronic form (Section 710(a)(vii)):

Applications filed via ePCT-Filing can be accessed by the applicant using ePCT.”

[Updating of Annex C(UG) of the PCT Applicant’s Guide]


23



Page

Information on Contracting States NL Netherlands 24

Fees Payable under the PCT AZ Azerbaijan 24 RO Romania 24



24


NL Netherlands

The Netherlands Patent Office has notified the International Bureau of changes concerning its facsimile services and the filing of documents by means of telecommunication (PCT Rule 92.4) – since 1 July 2018, the Office has discontinued the use of its facsimile machine and, consequently, no longer accepts the filing of documents by fax.

[Updating of Annex B1(NL) of the PCT Applicant’s Guide]


AZ Azerbaijan

The Intellectual Property Agency of the Republic of Azerbaijan has notified the International Bureau of new amounts of several fees, in Azerbaijani manat (AZN), payable to it as designated (or elected) Office. These fees, applicable since 27 May 2019, are as follows:

For patent or utility model: Additional fee for each independent claim in excess of one: AZN 71 Additional fee for each dependent claim in excess of ten: AZN 71 Annual fee for the 3rd year: AZN 50 (reduced to AZN 10 where all applicants are natural persons)

[Updating of the National Chapter, Summary (AZ) of the PCT Applicant’s Guide]

RO Romania

The State Office for Inventions and Trademarks (Romania) has notified the International Bureau of new amounts of fees, in new lei (RON), payable to the Office in its capacity as receiving Office. These amounts, applicable since 1 January 2020, are as follows:

Transmittal fee (PCT Rule 14): RON 475

Fee for priority document (PCT Rule 17.1(b)): RON 95 plus copying costs

[Updating of Annex C(RO) of the PCT Applicant’s Guide] 1 This fee is subject to value-added tax (VAT) of 18%.


25



Page

International Searching Authorities International Preliminary Examining Authorities EP European Patent Organisation 26

Fees Payable under the PCT EP European Patent Organisation 27

Filing and Processing in Electronic Form of International Applications: Notification by Receiving Offices CN China 30



26



Agreement between the European Patent Office and the International Bureau of the World Intellectual Property Organization1 – Amendment to Annex D

The European Patent Office (EPO) has notified the International Bureau, in accordance with Articles 11(3)(iii) and 11(4)(ii) of the above-mentioned Agreement, of amendments to Parts I and II of Annex D thereof. These amendments consist of changes in the amounts of several fees, the introduction of conditions for reduction of the supplementary international search fee, as well as changes to conditions for reductions of the international search fee and the international preliminary examination fee.

The new conditions for reduction of the international search fee shall apply to all international applications filed on or after 1 April 2020. The new conditions for reduction of the supplementary international search fee and the international preliminary examination fee shall apply in respect of payments made on or after 1 April 2020.

The amendments to Annex D, which will enter into force on 1 April 2020, will read as follows:



Kind of fee or charge Amount (Euro) Search fee (Rule 16.1(a)) [No change]2 Additional fee (Rule 40.2(a)) [No change]2 Supplementary search fees (Rule 45bis.3(a)) [No change]2 Preliminary examination fee (Rule 58.1(b)) [No change]2 Additional fee (Rule 68.3(a)) [No change]2 Protest fee (Rules 40.2(e) and 68.3(e)) 910 Review fee (Rule 45bis.6(c)) 910 Late furnishing fee (Rules 13ter.1(c) and 13ter.2) 240

1 Available on the WIPO website at: www.wipo.int/pct/en/texts/agreements/ag_ep.pdf 2 This fee is reduced by 75% under certain conditions (see decision of the EPO’s Administrative Council of

12 December 2019 (OJ EPO 2020, A4). See Part II, paragraph (4) for further details.


27

Part II. Conditions for and Extent of Refunds or Reductions of Fees

(1) to (3) [No change]

(4) The amount of the international search fee and the international preliminary examination fee (including any additional fee to be paid), and of the supplementary international search fee, shall be reduced by 75%:

(i) where the applicant or, if there are two or more applicants, each applicant is a natural person who is a national and resident of a State not party to the European Patent Convention, and which on the date of filing of the application or on the date of payment of the supplementary international search fee or of the international preliminary examination fee, is classified as a low-income or lower-middle-income economy by the World Bank. Where the Authority is informed of a change under Rule 92bis before the start of the international search, the supplementary international search or, as the case may be, the start of the international preliminary examination, and the change would modify the applicability of the fee reduction, the Authority may request the applicant to pay the full amount of the international search fee, supplementary international search fee or international preliminary examination fee, as well as the full amount of any additional fees that the applicant may be invited to pay; or

(ii) where the applicant, or if there are two or more applicants, each applicant is a natural or legal person who, within the meaning of Rule 18, is a national and resident of a State in which a validation agreement with the European Patent Organisation is in force.

(5) to (8) [No change]”



The European Patent Office (EPO) has notified the International Bureau of new amounts of fees, in euros (EUR), payable to it as International Searching Authority and applicable from 1 April 2020, as follows:

Protest fee (PCT Rule 40.2(e)): EUR 910

Review fee (PCT Rule 45bis.6(c)): EUR 910

Late furnishing fee (PCT Rule 13ter.1(c)) EUR 240

[Updating of Annexes D(EP) and SISA(EP) of the PCT Applicant’s Guide]


28

Furthermore, the Office notified new amounts of fees, in euros (EUR), payable to it as International Preliminary Examining Authority. These amounts, also applicable from 1 April 2020, are as follows:

Protest fee (PCT Rule 68.3(e)): EUR 910

Late furnishing fee (PCT Rule 13ter.2): EUR 240

[Updating of Annex E(EP) of the PCT Applicant’s Guide]

In addition, the Office notified the International Bureau of new amounts of several components of its national fee, in euros (EUR), payable to the Office in its capacity as designated (or elected) Office. These new amounts, applicable from 1 April 2020, are as follows:

National fee: Filing fee:3, 4 – for online filings EUR 125 – for non-online filings EUR 260 Additional fee for pages in excess of 35 (for the 36th and each subsequent page) EUR 16 Designation fee for one or more EPO Contracting States designated5 EUR 610 Claims fee:3 – for the 16th and each subsequent

claim up to the limit of 50: EUR 245 – for the 51st and each subsequent claim: EUR 610 Search fee:3 – for (international) applications filed

before 1 July 2005 EUR 920 – for (international) applications filed

on or after 1 July 2005 EUR 1,350

3 Must be paid within 31 months from the priority date. For claims fees see also paragraph EP.08 of National

Chapter (EP). 4 See the Decisions of the EPO’s Administrative Council dated 12 December 2019 (CA/D 12/19), OJ EPO 2020, A3. 5 The designation, extension and validation fees are payable within 31 months from the priority date or six months

after the date of publication of the international search report, whichever expires later.


29

Fee for further processing: – in the event of late payment of a fee [No change] – other cases EUR 265 Fee for late furnishing of a sequence listing EUR 240 Examination fee:6 – for (international) applications filed

before 1 July 2005 EUR 1,900 – for (international) applications filed on or after

1 July 2005 for which no supplementary European search report is drawn up EUR 1,900

– for all other (international) applications filed on or after 1 July 2005 EUR 1,700

Renewal fee for the third year7 EUR 490

Finally, the Office notified a new amount of the reduction of the search fee component of the national fee, in euros (EUR), for international applications for which the international search report or a supplementary international search report has been established by the Austrian Patent Office or, in accordance with the Protocol on Centralisation, by the Finnish Patent and Registration Office (PRH), the Nordic Patent Institute, the Spanish Patent and Trademark Office, the Swedish Patent and Registration Office, the Turkish Patent and Trademark Office (Turkpatent) or the Visegrad Patent Institute (VPI).

The new amount of this reduction is EUR 1,150.

The reduction shall apply to international applications filed up to and including 31 March 2024 and for which the supplementary search fee is paid on or after 1 April 2020.8

[Updating of the National Chapter, Summary (EP) of the PCT Applicant’s Guide]

6 A request for examination must be made and the examination fee must be paid within the time limit applicable under

PCT Article 22 or 39(1) and EPC Rule 159(1) or six months after the date of publication of the international search report, whichever expires later.

7 This fee is due before the expiration of the month containing the second anniversary (24 months) of the international filing date; it is due within 31 months from the priority date, if that 31-month time limit expires later.

8 See the Decision of the EPO’s Administrative Council dated 12 December 2019 (CA/D 12/19), OJ EPO 2020, A3.


30


CN China

In January 2020, the China National Intellectual Property Administration (CNIPA) announced9 that, as from 1 March 2020, it would no longer accept international applications in electronic form filed using the PCT-SAFE software.

On 18 February 2020, pursuant to PCT Rule 89bis.1(d) and Section 710(b) of the Administrative Instructions under the PCT, the Office, in its capacity as receiving Office, notified the International Bureau of this change.

Consequently, with effect from 1 March 2020, the item concerning electronic filing software specified by the Office in the notification published in the Official Notifications (PCT Gazette) of 23 June 2016, pages 133 et seq. will be replaced by the following:

As to electronic filing software (Section 710(a)(i)): – CEPCT Software

[Updating of Annex C(CN) of the PCT Applicant’s Guide]

9 This announcement is available on the Office’s website at:

http://www.pctonline.cnipa.gov.cn/index.do?type=gengduo&jilulx=1


31

OFFICIAL NOTICES (PCT GAZETTE) 5 March 2020


Page

Meetings of the International Patent Cooperation Union – Assembly (Fifty-First (22nd Ordinary) Session) Note Prepared by the International Bureau 32 Amendments of the Regulations under the PCT

(to enter into force on 1 July 2020) 34 Revised List of States Meeting the Criteria referred to in

Items 5(a) and 5(b) of the PCT Schedule of Fees 45

Fees Payable under the PCT EP European Patent Organisation 46


Official Notices (PCT Gazette) – 5 March 2020

32

MEETINGS OF THE INTERNATIONAL PATENT COOPERATION UNION – ASSEMBLY (FIFTY-FIRST (22ND ORDINARY) SESSION)

NOTE PREPARED BY THE INTERNATIONAL BUREAU

At its fifty-first (22nd ordinary) session, which was held in Geneva from 30 September to 9 October 2019 as part of the meetings of the Assemblies of the Member States of WIPO, the Assembly of the International Patent Cooperation Union (PCT Union) approved the following changes affecting the PCT System:

– amendments to the PCT Regulations; and – a revised version of the lists of States meeting the criteria referred to in

items 5(a) and 5(b) of the PCT Schedule of Fees, in accordance with the Directives1 for updating these lists.

Documents prepared for the Assembly, which give detailed background information relating to the decisions taken, as well as the session report, are available on the WIPO website at:

www.wipo.int/meetings/en/details.jsp?meeting_id=52258

The aforementioned changes are outlined below.

Amendments to the PCT Regulations

The amendments to the PCT Regulations that were approved by the Assembly will enter into force on 1 July 2020 and are as follows:

– Amendments to PCT Rule 82quater, regarding safeguards in case of outages affecting Offices, are intended to allow Offices to simplify the process of excusing failures to meet certain time limits due to outages of electronic systems;

– New PCT Rule 26quater, concerning correction or addition of indications under PCT Rule 4.11, allows for correction of errors or omissions in indications of the type of protection to be sought in the national phase;

– New PCT Rule 40bis , as well as amendments to PCT Rules 4, 12, 20, 48, 51bis, 55 and 82ter, concerning erroneously filed elements and parts of the international application, are intended to align the practices of receiving Offices and designated (or elected) Offices in the special case where an applicant has erroneously filed a wrong element or part of the international application;

1 As adopted by the Assembly of the PCT Union at its forty-sixth (27th extraordinary) session and published in the

Official Notices (PCT Gazette) of 12 February 2015 (page 33).


33

– Amendments to PCT Rules 15, 16, 57 and 96, concerning the transfer of PCT Fees, are enabling provisions setting out consistent procedures on transferring fees from one Office to another via the International Bureau, with an aim to assist Offices wishing to use the new “netting” arrangement; and

– Amendments to PCT Rules 71 and 94, concerning the availability of the file held by the International Preliminary Examining Authority, allow greater transparency by permitting more documents related to the international preliminary examination procedure to be made available to the public.

Furthermore, the Assembly adopted the following Understandings concerning the provisions relating to erroneously filed elements and parts of the international application:

– “In adopting new Rule 20.5bis, the Assembly agreed that Article 15 should be interpreted such that, in the case of incorporation by reference of a correct element or part under Rule 20.5bis(d), the International Searching Authority would only be required to carry out the international search on the basis of the international application (‘the claims, with due regard to the description and the drawings, if any’) including the correct element or part incorporated by reference, and would not need to take into account any erroneously filed element or part which, pursuant to Rule 20.5bis(d), remained in the application. The Assembly further agreed that Article 15 should be interpreted such that, in the case referred to in Rule 40bis.1, where no additional fees were paid within the prescribed time limit, the International Searching Authority would only be required to carry out the international search on the basis of the international application (‘the claims, with due regard to the description and the drawings, if any’) including the erroneously filed element or part, and would not need to take into account any correct element or part included in the application under Rule 20.5bis(c) or incorporated by reference under Rule 20.5bis(d).

– In adopting new Rule 20.8(a-bis), the Assembly agreed that, where a correct element or part cannot be incorporated by reference under Rules 20.5bis(a)(ii) and (d) because of the operation of Rule 20.8(a-bis), the receiving Office concerned and the International Bureau shall agree, under Rule 19.4(a)(iii), with the authorization of the applicant, that the procedures under Rule 19.4 shall apply, in which case the international application shall, subject to Rule 19.4(b), be considered to have been received by that Office on behalf of the International Bureau as receiving Office under Rule 19.1(a)(iii).”

The text of the new and amended Rules is reproduced hereafter.


34

AMENDMENTS OF THE REGULATIONS UNDER THE PCT (to enter into force on 1 July 2020)

Rule 4 The Request (Contents)

4.1 to 4.17 [No change]

4.18 Statement of Incorporation by Reference

Where the international application, on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, claims the priority of an earlier application, the request may contain a statement that, where an element of the international application referred to in Article 11(1)(iii)(d) or (e), or a part of the description, claims or drawings referred to in Rule 20.5(a), or an element or part of the description, claims or drawings referred to in Rule 20.5bis(a) is not otherwise contained in the international application but is completely contained in the earlier application, that element or part is, subject to confirmation under Rule 20.6, incorporated by reference in the international application for the purposes of Rule 20.6. Such a statement, if not contained in the request on that date, may be added to the request if, and only if, it was otherwise contained in, or submitted with, the international application on that date.

4.19 [No change]

Rule 12 Language of the International Application

and Translations for the Purposes of International Search and International Publication

12.1 [No change]

12.1bis Language of Elements and Parts Furnished under Rule 20.3, 20.5, 20.5bis or 20.6

An element referred to in Article 11(1)(iii)(d) or (e) furnished by the applicant under Rule 20.3(b), 20.5bis(b), 20.5bis(c) or 20.6(a) and a part of the description, claims or drawings furnished by the applicant under Rule 20.5(b), 20.5(c), 20.5bis(b), 20.5bis(c) or 20.6(a) shall be in the language of the international application as filed or, where a translation of the application is required under Rule 12.3(a) or 12.4(a), in both the language of the application as filed and the language of that translation.

12.1ter to 12.4 [No change]


35

Rule 15 The International Filing Fee

15.1 [No change]

15.2 Amount; Transfer

(a) and (b) [No change]

(c) Where the prescribed currency is the Swiss franc, the receiving Office shall transfer the said fee to the International Bureau in Swiss francs in accordance with Rule 96.2.

(d) Where the prescribed currency is a currency other than the Swiss franc and that currency: (i) is freely convertible into Swiss francs, the Director General shall establish, for each receiving Office which prescribes such a currency for the payment of the international filing fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall be transferred by the receiving Office to the International Bureau in accordance with Rule 96.2; (ii) is not freely convertible into Swiss francs, the receiving Office shall be responsible for the conversion of the international filing fee from the prescribed currency into Swiss francs and shall transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau in accordance with Rule 96.2. Alternatively, if the receiving Office so wishes, it may convert the international filing fee from the prescribed currency into euros or US dollars and transfer the equivalent amount of that fee in euros or US dollars, as established by the Director General according to directives given by the Assembly as referred to in item (i), to the International Bureau in accordance with Rule 96.2.

15.3 and 15.4 [No change]

Rule 16 The Search Fee

16.1 Right to Ask for a Fee


(c) Where the prescribed currency is the currency in which the International Searching Authority has fixed the said fee (“fixed currency”), the receiving Office shall transfer the said fee to that Authority in that currency in accordance with Rule 96.2.

(d) Where the prescribed currency is not the fixed currency and that currency: (i) is freely convertible into the fixed currency, the Director General shall establish, for each receiving Office which prescribes such a currency for the payment of the search fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall be transferred by the receiving Office to the International Searching Authority in accordance with Rule 96.2;


36

(ii) is not freely convertible into the fixed currency, the receiving Office shall beresponsible for the conversion of the search fee from the prescribed currency into the fixed currency and shall transfer that fee in the fixed currency, in the amount fixed by the International Searching Authority, to the International Searching Authority in accordance with Rule 96.2.

(e) and (f) [No change]


Rule 20 International Filing Date


20.5 Missing Parts

(a) Where, in determining whether the papers purporting to be an internationalapplication fulfill the requirements of Article 11(1), the receiving Office finds that a part of the description, claims or drawings is or appears to be missing, including the case where all of the drawings are or appear to be missing (“missing part”) but not including the case where an entire element referred to in Article 11(1)(iii)(d) or (e) is or appears to be missing and not including the case referred to in Rule 20.5bis(a), it shall promptly invite the applicant, at the applicant’s option:

(i) to complete the purported international application by furnishing the missingpart; or

(ii) to confirm, in accordance with Rule 20.6(a), that the part was incorporated byreference under Rule 4.18;

and to make observations, if any, within the applicable time limit under Rule 20.7. If that time limit expires after the expiration of 12 months from the filing date of any application whose priority is claimed, the receiving Office shall call that circumstance to the attention of the applicant.

(b) Where, following an invitation under paragraph (a) or otherwise, the applicantfurnishes to the receiving Office, on or before the date on which all of the requirements of Article 11(1) are fulfilled but within the applicable time limit under Rule 20.7, a missing part referred to in paragraph (a) so as to complete the purported international application, that part shall be included in the application, and the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2(b) and (c).

(c) to (e) [No change]


37

20.5bis Erroneously Filed Elements and Parts

(a) Where, in determining whether the papers purporting to be an international application fulfill the requirements of Article 11(1), the receiving Office finds that an entire element referred to in Article 11(1)(iii)(d) or (e) has or appears to have been erroneously filed, or that a part of the description, claims or drawings has or appears to have been erroneously filed, including the case where all drawings have or appear to have been erroneously filed (“erroneously filed element or part”), it shall promptly invite the applicant, at the applicant’s option: (i) to correct the purported international application by furnishing the correct element or part; or (ii) to confirm, in accordance with Rule 20.6(a), that the correct element or part was incorporated by reference under Rule 4.18;

and to make observations, if any, within the applicable time limit under Rule 20.7. If that time limit expires after the expiration of 12 months from the filing date of any application whose priority is claimed, the receiving Office shall call that circumstance to the attention of the applicant.

(b) Where, following an invitation under paragraph (a) or otherwise, the applicant furnishes to the receiving Office, on or before the date on which all of the requirements of Article 11(1) are fulfilled but within the applicable time limit under Rule 20.7, a correct element or part so as to correct the purported international application, that correct element or part shall be included in the application, the erroneously filed element or part concerned shall be removed from the application and the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2(b) and (c) and as provided for in the Administrative Instructions.

(c) Where, following an invitation under paragraph (a) or otherwise, the applicant furnishes to the receiving Office, after the date on which all of the requirements of Article 11(1) were fulfilled but within the applicable time limit under Rule 20.7, a correct element or part so as to correct the international application, that correct element or part shall be included in the application, the erroneously filed element or part concerned shall be removed from the application, and the receiving Office shall correct the international filing date to the date on which the receiving Office received that correct element or part, notify the applicant accordingly and proceed as provided for in the Administrative Instructions.

(d) Where, following an invitation under paragraph (a) or otherwise, a correct element or part is, under Rule 20.6(b), considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, the erroneously filed element or part concerned shall remain in the application, and the receiving Office shall accord as the international filing date the date on which all of the requirements of Article 11(1) are fulfilled and proceed as provided in Rule 20.2(b) and (c) and as provided for in the Administrative Instructions.


38

(e) Where the international filing date has been corrected under paragraph (c), the applicant may, in a notice submitted to the receiving Office within one month from the date of the notification under paragraph (c), request that the correct element or part be disregarded, in which case the correct element or part shall be considered not to have been furnished, the erroneously filed element or part concerned shall be considered not to have been removed from the application and the correction of the international filing date under paragraph (c) shall be considered not to have been made, and the receiving Office shall proceed as provided for in the Administrative Instructions.

20.6 Confirmation of Incorporation by Reference of Elements and Parts


(c) Where the receiving Office finds that a requirement under Rule 4.18 or paragraph (a) has not been complied with or that the element or part referred to in paragraph (a) is not completely contained in the earlier application concerned, the receiving Office shall proceed as provided for in Rule 20.3(b)(i), 20.5(b), 20.5(c), 20.5bis(b) or 20.5bis(c), as the case may be.

20.7 Time Limit

(a) The applicable time limit referred to in Rules 20.3(a) and (b), 20.4, 20.5(a), (b) and (c), 20.5bis(a), (b) and (c), and 20.6(a) shall be: (i) where an invitation under Rule 20.3(a), 20.5(a) or 20.5bis(a), as applicable, was sent to the applicant, two months from the date of the invitation; (ii) where no such invitation was sent to the applicant, two months from the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office.

(b) [No change]

20.8 Incompatibility with National Laws

(a) [No change]

(a-bis) If, on October 9, 2019, any of Rules 20.5bis(a)(ii) and (d) are not compatible with the national law applied by the receiving Office, the Rules concerned shall not apply to an international application filed with that receiving Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 9, 2020. The information received shall be promptly published by the International Bureau in the Gazette.

(a-ter) Where an element or a part cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of paragraph (a) or paragraph (a-bis) of this Rule, the receiving Office shall proceed as provided for in Rule 20.3(b)(i), 20.5(b), 20.5(c), 20.5bis(b) or 20.5bis(c), as the case may be. Where the receiving Office proceeds as provided for in Rule 20.5(c) or 20.5bis(c), the applicant may proceed as provided for in Rule 20.5(e) or 20.5bis(e), as the case may be.

(b) [No change]


39

(b-bis) If, on October 9, 2019, any of Rules 20.5bis(a)(ii) and (d) are not compatible with the national law applied by the designated Office, the Rules concerned shall not apply in respect of that Office in relation to an international application in respect of which the acts referred to in Article 22 have been performed before that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 9, 2020. The information received shall be promptly published by the International Bureau in the Gazette.

(c) Where an element or part is considered to have been incorporated by referencein the international application by virtue of a finding of the receiving Office under Rule 20.6(b), but that incorporation by reference does not apply to the international application for the purposes of the procedure before a designated Office because of the operation of paragraph (b) or paragraph (b-bis) of this Rule, the designated Office may treat the application as if the international filing date had been accorded under Rule 20.3(b)(i), 20.5(b) or 20.5bis(b), or corrected under Rule 20.5(c) or 20.5bis(c), as the case may be, provided that Rule 82ter.1(c) and (d) shall apply mutatis mutandis.

Rule 26quater Correction or Addition of Indications under Rule 4.11

26quater.1 Correction or Addition of Indications

The applicant may correct or add to the request any indication referred to in Rule 4.11 by a notice submitted to the International Bureau within a time limit of 16 months from the priority date, provided that any notice which is received by the International Bureau after the expiration of that time limit shall be considered to have been received on the last day of that time limit if the notice reaches the International Bureau before the technical preparations for international publication have been completed.

26quater.2 Late Correction or Addition of Indications

Where any correction or addition of an indication referred to in Rule 4.11 is not timely received under Rule 26quater.1, the International Bureau shall notify the applicant accordingly and shall proceed as provided for in the Administrative Instructions.

Rule 40bis Additional Fees in Case of Missing Parts or Correct Elements and Parts

Included in the International Application or Considered to Have Been Contained in the International Application

40bis.1 Invitation to Pay Additional Fees

The International Searching Authority may invite the applicant to pay additional fees where the fact that a missing part or a correct element or part:

(i) is included in the international application under Rule 20.5(c) orRule 20.5bis(c), respectively; or


40

(ii) is considered, under Rule 20.5(d) or Rule 20.5bis(d), respectively, to have been contained in the international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office; is notified to that Authority only after it has begun to draw up the international search report. The invitation shall invite the applicant to pay the additional fees within one month from the date of the invitation and indicate the amount of those fees to be paid. The amount of the additional fees shall be determined by the International Searching Authority but shall not exceed the search fee; the additional fees shall be payable directly to that Authority. Provided any such additional fees have been paid within the prescribed time limit, the International Searching Authority shall establish the international search report on the international application including any such missing part or any such correct element or part.

Rule 48 International Publication

48.1 [No change]

48.2 Contents

(a) [No change]

(b) Subject to paragraph (c), the front page shall include: (i) to (iv) [No change] (v) where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii), 20.5(d) or 20.5bis(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, an indication to that effect, together with an indication as to whether the applicant, for the purposes of Rule 20.6(a)(ii), relied on compliance with Rule 17.1(a), (b) or (b-bis) in relation to the priority document or on a separately submitted copy of the earlier application concerned; (vi) [No change] (vii) where applicable, an indication that the published international application contains information concerning a request under Rule 26bis.3 for restoration of the right of priority and the decision of the receiving Office upon such request; (viii) where applicable, an indication that an erroneously filed element or part has been removed from the international application in accordance with Rule 20.5bis(b) or (c).

(c) to (n) [No change]



41

Rule 51bis Certain National Requirements Allowed under Article 27

51bis.1 Certain National Requirements Allowed

(a) Subject to Rule 51bis.2, the national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish, in particular: (i) to (vi) [No change] (vii) any missing indication required under Rule 4.5(a)(ii) and (iii) in respect of any applicant for the designated State; (viii) in the cases referred to in Rule 82ter.1, a translation of any erroneously filed element or part removed from the international application in accordance with Rule 20.5bis(b) or (c).

(b) to (d) [No change]

(e) The national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish a translation of the priority document, provided that such a translation may only be required: (i) [No change] (ii) where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii), 20.5(d) or 20.5bis(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, for the purposes of determining under Rule 82ter.1(b) whether that element or part is completely contained in the priority document concerned, in which case the national law applicable by the designated Office may also require the applicant to furnish, in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the translation of the priority document.

51bis.2 and 51bis.3 [No change]

Rule 55 Languages (International Preliminary Examination)

55.1 [No change]

55.2 Translation of International Application

(a) [No change]

(a-bis) A translation of the international application into a language referred to in paragraph (a) shall include any element referred to in Article 11(1)(iii)(d) or (e) furnished by the applicant under Rule 20.3(b), 20.5bis(b), 20.5bis(c) or 20.6(a) and any part of the description, claims or drawings furnished by the applicant under Rule 20.5(b), 20.5(c), 20.5bis(b), 20.5bis(c) or 20.6(a) which is considered to have been contained in the international application under Rule 20.6(b).

(a-ter) to (d) [No change]


42

55.3 [No change]

Rule 57 The Handling Fee

57.1 [No change]

57.2 Amount; Transfer


(c) Where the prescribed currency is the Swiss franc, the Authority shall transfer thesaid fee to the International Bureau in Swiss francs in accordance with Rule 96.2.

(d) Where the prescribed currency is a currency other than the Swiss franc and thatcurrency:

(i) is freely convertible into Swiss francs, the Director General shall establish, foreach Authority which prescribes such a currency for the payment of the handling fee, an equivalent amount of that fee in the prescribed currency according to directives given by the Assembly, and the amount in that currency shall be transferred by the Authority to the International Bureau in accordance with Rule 96.2;

(ii) is not freely convertible into Swiss francs, the Authority shall be responsible forthe conversion of the handling fee from the prescribed currency into Swiss francs and shall transfer that fee in Swiss francs, in the amount set out in the Schedule of Fees, to the International Bureau in accordance with Rule 96.2. Alternatively, if the Authority so wishes, it may convert the handling fee from the prescribed currency into euros or US dollars and transfer the equivalent amount of that fee in euros or US dollars, as established by the Director General according to directives given by the Assembly as referred to in item (i), to the International Bureau in accordance with Rule 96.2.


Rule 71 Transmittal of the

International Preliminary Examination Report and Related Documents

71.1 Recipients

(a) The International Preliminary Examining Authority shall, on the same day, transmitone copy of the international preliminary examination report and its annexes, if any, to the International Bureau, and one copy to the applicant.

(b) The International Preliminary Examining Authority shall transmit copies of otherdocuments from the file of the international preliminary examination to the International Bureau in accordance with the Administrative Instructions.

71.2 [No change]


43

Rule 82ter Rectification of Errors Made

by the Receiving Office or by the International Bureau

82ter.1 Errors Concerning the International Filing Date and the Priority Claim

(a) [No change]

(b) Where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii), 20.5(d) or 20.5bis(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part but the designated or elected Office finds that: (i) the applicant has not complied with Rule 17.1(a), (b) or (b-bis) in relation to the priority document; (ii) a requirement under Rule 4.18, 20.6(a)(i) or 51bis.1(e)(ii) has not been complied with; or (iii) the element or part is not completely contained in the priority document concerned; the designated or elected Office may, subject to paragraph (c), treat the international application as if the international filing date had been accorded under Rule 20.3(b)(i), 20.5(b) or 20.5bis(b), or corrected under Rule 20.5(c) or 20.5bis(c), as applicable, provided that Rule 17.1(c) shall apply mutatis mutandis.

(c) The designated or elected Office shall not treat the international application under paragraph (b) as if the international filing date had been accorded under Rule 20.3(b)(i), 20.5(b) or 20.5bis(b), or corrected under Rule 20.5(c) or 20.5bis(c), without giving the applicant the opportunity to make observations on the intended treatment, or to make a request under paragraph (d), within a time limit which shall be reasonable under the circumstances.

(d) Where the designated or elected Office, in accordance with paragraph (c), has notified the applicant that it intends to treat the international application as if the international filing date had been corrected under Rule 20.5(c) or 20.5bis(c), the applicant may, in a notice submitted to that Office within the time limit referred to in paragraph (c), request that the missing part concerned, or the correct element or part concerned, be disregarded for the purposes of national processing before that Office, in which case that missing part, or that correct element or part, shall be considered not to have been furnished and that Office shall not treat the international application as if the international filing date had been corrected.


44

Rule 82quater Excuse of Delay in Meeting Time Limits

82quater.1 [No change]

82quater.2 Unavailability of Electronic Means of Communication at the Office

(a) Any national Office or intergovernmental organization may provide that, where a time limit fixed in the Regulations for performing an action before that Office or organization is not met due to the unavailability of any of the permitted electronic means of communication at that Office or organization, delay in meeting that time limit shall be excused, provided that the respective action was performed on the next working day on which the said electronic means of communication were available. The Office or organization concerned shall publish information on any such unavailability including the period of the unavailability, and notify the International Bureau accordingly.

(b) The excuse of a delay in meeting a time limit under paragraph (a) need not be taken into account by any designated or elected Office before which the applicant, at the time the information referred to in paragraph (a) is published, has already performed the acts referred to in Article 22 or Article 39.

Rule 94 Access to Files

94.1 Access to the File Held by the International Bureau


(c) The International Bureau shall, if so requested by an elected Office, but not before the international preliminary examination report has been established, furnish on behalf of that Office copies under paragraph (b) of any document transmitted to it under Rule 71.1(a) or (b) by the International Preliminary Examining Authority. The International Bureau shall promptly publish details of any such request in the Gazette.

(d) to (g) [No change]

94.1bis to 94.3 [No change]

Rule 96 The Schedule of Fees; Receipt and Transfer of Fees

96.1 [No change]

96.2 Notification of Receipt of Fees; Transfer of Fees

(a) For the purposes of this Rule, “Office” shall mean the receiving Office (including the International Bureau acting as receiving Office), the International Searching Authority, an Authority specified for supplementary international search, the International Preliminary Examining Authority or the International Bureau.


45

(b) Where, in accordance with these Regulations or the Administrative Instructions, a fee is collected by one Office (“collecting Office”) for the benefit of another Office (“beneficiary Office”), the collecting Office shall promptly notify the receipt of each such fee in accordance with the Administrative Instructions. Upon receipt of the notification, the beneficiary Office shall proceed as if it had received the fee on the date on which the fee was received by the collecting Office.

(c) The collecting Office shall transfer any fees collected for the benefit of a beneficiary Office to that Office in accordance with the Administrative Instructions.

Revised Lists of States Meeting the Criteria referred to in Items 5(a) and 5(b) of the PCT Schedule of Fees

Having reviewed the criteria set out in item 5 of the PCT Schedule of Fees, the Assembly decided that those criteria be maintained and that they be reviewed again by the Assembly in five years’ time, as required by that Schedule.

The revised lists of States meeting those criteria, with effect since 1 January 2020, are as follows:

(1) For the purpose of item 5(a) of the PCT Schedule of Fees: (i) States that are PCT Contracting States:

Albania, Algeria, Angola, Antigua and Barbuda, Armenia, Azerbaijan, Bahrain, Barbados, Belarus, Belize, Benin, Bosnia and Herzegovina, Botswana, Brazil, Bulgaria, Burkina Faso, Cambodia, Cameroon, Central African Republic, Chad, Chile, China, Colombia, Comoros, Congo, Costa Rica, Côte d'Ivoire, Croatia, Cuba, Czech Republic, Democratic People's Republic of Korea, Djibouti, Dominica, Dominican Republic, Ecuador, Egypt, El Salvador, Equatorial Guinea, Estonia, Eswatini, Gabon, Gambia, Georgia, Ghana, Greece, Grenada, Guatemala, Guinea, Guinea-Bissau, Honduras, Hungary, India, Indonesia, Iran (Islamic Republic of), Jordan, Kazakhstan, Kenya, Kyrgyzstan, Lao People's Democratic Republic, Latvia, Lesotho, Liberia, Libya, Lithuania, Madagascar, Malawi, Malaysia, Mali, Malta, Mauritania, Mexico, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Nicaragua, Niger, Nigeria, North Macedonia, Oman, Panama, Papua New Guinea, Peru, Philippines, Poland, Portugal, Republic of Moldova, Romania, Russian Federation, Rwanda, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, Samoa, Sao Tome and Principe, Saudi Arabia, Senegal, Serbia, Seychelles, Sierra Leone, Slovakia, Slovenia, South Africa, Sri Lanka, Sudan, Syrian Arab Republic, Tajikistan, Thailand, Togo, Trinidad and Tobago, Tunisia, Turkey, Turkmenistan, Uganda, Ukraine, United Republic of Tanzania, Uzbekistan, Viet Nam, Zambia, Zimbabwe.


46

(ii) States that are not PCT Contracting States: Afghanistan, Argentina, Bangladesh, Bhutan, Bolivia (Plurinational State of), Burundi, Cabo Verde, Democratic Republic of the Congo, Eritrea, Ethiopia, Fiji, Micronesia (Federated States of), Guyana, Haiti, Iraq, Jamaica, Kiribati, Lebanon, Maldives, Marshall Islands, Mauritius, Myanmar, Nauru, Nepal, Pakistan, Palau, Paraguay, Solomon Islands, Somalia, South Sudan, Suriname, Timor-Leste, Tonga, Tuvalu, Uruguay, Vanuatu, Venezuela (Bolivarian Republic of), Yemen.

(2) For the purpose of item 5(b) of the PCT Schedule of Fees: (i) States that are PCT Contracting States:

Angola, Benin, Burkina Faso, Cambodia, Central African Republic, Chad, Comoros, Djibouti, Gambia, Guinea, Guinea-Bissau, Lao People's Democratic Republic, Lesotho, Liberia, Madagascar, Malawi, Mali, Mauritania, Mozambique, Niger, Rwanda, Sao Tome and Principe, Senegal, Sierra Leone, Sudan, Togo, Uganda, United Republic of Tanzania, Zambia.

(ii) States that are not PCT Contracting States: Afghanistan, Bangladesh, Bhutan, Burundi, Democratic Republic of the Congo, Eritrea, Ethiopia, Haiti, Kiribati, Myanmar, Nepal, Solomon Islands, Somalia, South Sudan, Timor-Leste, Tuvalu, Vanuatu, Yemen.



The European Patent Office (EPO) has notified the International Bureau of new amounts of fees, in euros (EUR), payable to it in its capacity as receiving Office and applicable from 1 April 2020, as follows:

Transmittal fee (PCT Rule 14) EUR 135

Fee for priority document (PCT Rule 17.1(b)) EUR 105

Fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d)) EUR 665

[Updating of Annex C(EP) of the PCT Applicant’s Guide]


47



Page


Fees Payable under the PCT BR Brazil 48 EP European Patent Organisation 48 MA Morocco 48 ZA South Africa 49

Designated (or Elected) Offices NZ New Zealand 49



48


SA Saudi Arabia

The Saudi Authority for Intellectual Property (SAIP) has notified the International Bureau of a change to its telephone number, which is now as follows:

Telephone: (966-11) 280 59 98



BR Brazil

Pursuant to PCT Rule 16.1(d), new equivalent amounts in Swiss francs (CHF) and US dollars (USD) have been established for the search fee for an international search carried out by the National Institute of Industrial Property (Brazil). These amounts, applicable from 1 May 2020, are CHF 375 and USD 376, respectively, when filing online, and CHF 562 and USD 564, respectively, when filing on paper.

[Updating of Annex D(BR) of the PCT Applicant’s Guide]


Pursuant to PCT Rule 16.1(d), a new equivalent amount in Pounds sterling (GBP) has been established for the search fee for an international search carried out by the European Patent Office (EPO). This amount, applicable from 1 May 2020, is GBP 1,479.

[Updating of Annex D(EP) of the PCT Applicant’s Guide]

MA Morocco

The Moroccan Office of Industrial and Commercial Property (OMPIC), in its capacity as receiving Office, has notified the International Bureau of the discontinuation of the transmittal fee (PCT Rule 14), with effect since 1 October 2017.

The Office further notified that, since 1 January 2018, the fee for priority document (PCT Rule 17.1(b)) is no longer required.

[Updating of Annex C(MA) of the PCT Applicant’s Guide]


49

In addition, the Office notified changes to the conditions of eligibility for reduction of the national fee, payable to OMPIC in its capacity as designated (or elected) Office – since 2 September 2019, public establishments, foundations, research centers and associations with a research and development mission, whether foreign or national, have been entitled to pay the reduced amount of the national fee.

Very small enterprises, small or medium enterprises (in accordance with the criteria of the SME charter), natural persons, self-entrepreneurs, craftsmen, universities and educational establishments, whether foreign or national, continue to be eligible for reductions of the national fee.

[Updating of the National Chapter, Summary (MA) of the PCT Applicant’s Guide]

ZA South Africa

The Companies and Intellectual Property Commission (CIPC) (South Africa) has notified the International Bureau of changes to the national fee, in South African rand (ZAR), payable to the Office in its capacity as designated (or elected) Office. As from 1 April 2020, the following amounts are payable by all applicants:

National fee: Filing fee ZAR 590 First annual fee1 ZAR 130

[Updating of the National Chapter, Summary (ZA) of the PCT Applicant’s Guide]


NZ New Zealand

The Intellectual Property Office of New Zealand (IPONZ) has notified the International Bureau of a change to its special requirement, under PCT Rule 51bis, concerning the address for service.

Applicants must still have an address for service of notices and other communications; however, since 5 April 2018, this address may be in either New Zealand or Australia.

[Updating of the National Chapter, Summary (NZ) of the PCT Applicant’s Guide]

1 Due within three years from the international filing date.


50



Page

Information on Contracting States GB United Kingdom 51

Receiving Offices GB United Kingdom 51

Erroneously Filed Elements and Parts: Notifications by Receiving Offices of Incompatibility with National Laws under PCT Rule 20.8(a-bis) CZ Czechia 52

Erroneously Filed Elements and Parts: Notifications by Designated Offices of Incompatibility with National Laws under PCT Rule 20.8(b-bis) CZ Czechia 53

d WIPO

WORLD INTELLECTUAL PROPERTY ORGANIZA TI ON


51


GB United Kingdom

The Intellectual Property Office (United Kingdom) has notified the International Bureau of a change to its address for filings by hand, which is now as follows:

Address (filings by hand): 3rd Floor 10 Victoria Street London SW1H 0NB United Kingdom

[Updating of Annex B1(GB) of the PCT Applicant’s Guide]

RECEIVING OFFICES

GB United Kingdom

The Intellectual Property Office (United Kingdom) has notified the International Bureau of a change concerning the address from which to obtain a list of registered patent attorneys, as follows:

The Registrar c/o The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20-23 Holborn London EC1N 2JD United Kingdom

[Updating of Annex C(GB) of the PCT Applicant’s Guide]


52


During its fifty-first (22nd ordinary) session, held in Geneva from 30 September to 9 October 2019, the Assembly of the International Patent Cooperation Union (PCT Union) unanimously adopted, among others, new Rule 20.5bis1 of the PCT Regulations concerning erroneously filed elements and parts of international applications, as well as new Rule 20.8(a-bis), concerning incompatibility of Rules 20.5bis(a)(ii)2 and 20.5bis(d)3 with the national law applied by receiving Offices. These new rules will enter into force on 1 July 2020.

New Rule 20.8(a-bis) states: “If, on October 9, 2019, any of Rules 20.5bis(a)(ii) and (d) are not compatible with the national law applied by the receiving Office, the rules concerned shall not apply to an international application filed with that receiving Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 9, 2020. The information received shall be promptly published by the International Bureau in the Gazette.”

CZ Czechia

In accordance with new PCT Rule 20.8(a-bis), which will enter into force on 1 July 2020, the Industrial Property Office (Czechia) has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) are not compatible with the national law applied by the Office in its capacity as receiving Office.






53


During its fifty-first (22nd ordinary) session, held in Geneva from 30 September to 9 October 2019, the Assembly of the International Patent Cooperation Union (PCT Union) unanimously adopted, among others, new Rule 20.5bis4 of the PCT Regulations concerning erroneously filed elements and parts of international applications, as well as new Rule 20.8(b-bis), concerning incompatibility of Rules 20.5bis(a)(ii)5 and 20.5bis(d)6 with the national law applied by designated Offices. These new rules will enter into force on 1 July 2020.

New Rule 20.8(b-bis) states: “If, on October 9, 2019, any of Rules 20.5bis(a)(ii) and (d) are not compatible with the national law applied by the designated Office, the rules concerned shall not apply in respect of that Office in relation to an international application in respect of which the acts referred to in Article 22 have been performed before that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 9, 2020. The information received shall be promptly published by the International Bureau in the Gazette.”

CZ Czechia

In accordance with new PCT Rule 20.8(b-bis), which will enter into force on 1 July 2020, the Industrial Property Office (Czechia) has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) are not compatible with the national law applied by the Office in its capacity as designated Office.



54



Page


Fees Payable under the PCT IS Iceland 55

Designated (or Elected) Offices AU Australia 56


55


SA Saudi Arabia

The Saudi Authority for Intellectual Property (SAIP) has notified the International Bureau that its telephone numbers are as follows:

Telephone: (966-11) 280 59 98 (966-11) 280 59 76



IS Iceland

The Icelandic Intellectual Property Office (ISIPO) has notified the International Bureau of new amounts of fees, in Icelandic kronor (ISK), payable to it in its capacity as receiving Office. These amounts, applicable from 1 May 2020, are as follows:

Transmittal fee (PCT Rule 14): ISK 17,800

Fee for priority document (PCT Rule 17.1(b)): ISK 4,800

Fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d)): ISK 42,500

[Updating of Annex C(IS) of the PCT Applicant’s Guide]


56

Furthermore, the Office notified new amounts of several components of the national fee, in Icelandic kronor (ISK), payable to it in its capacity as designated (or elected) Office. These amounts, also applicable from 1 May 2020, are as follows:

National fee: Application fee1 ISK 66,100 Claim fee for each claim in excess of 102 ISK 4,300 Additional fee for late furnishing of translation3 ISK 17,800 Total annual fees for the first three years4 ISK 33,900

[Updating of the National Chapter, Summary (IS) of the PCT Applicant’s Guide]


AU Australia

The Australian Patent Office has notified the International Bureau of changes to its special requirements under Rule 51bis, concerning the address for service and verification of the translation. These changes, applicable since 25 September 2019, are as follows:

– Applicants must still have an address for service of notices and other communications; however, this address may be in either Australia or New Zealand (but no representation by an agent is required).

– Verification of translations will only be required to be furnished to the Office if the Commissioner specifically requires the applicant to do so.

[Updating of the National Chapter, Summary (AU) of the PCT Applicant’s Guide]

1 Must be paid within the time limit applicable under PCT Article 22 or 39(1). 2 If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the

applicant to comply with the requirement within a time limit fixed in the invitation. 3 Where the basic national fee has been paid within the applicable time limit under PCT Article 22 or 39(1), the

prescribed translation may be filed within a further period of two months, provided that it is accompanied by the additional fee.

4 These fees are payable within two months after performing the acts for entering the national phase. Payment can still be made, together with a 20% surcharge for late payment, before the expiration of the sixth month after the month containing the anniversary of the international filing date.


57

OFFICIAL NOTICES (PCT GAZETTE) 2 April 2020


Page

Information on Contracting States BR Brazil 58 IN India 58

Information on Contracting States: Notifications from Offices Concerning Exceptional Non-Working Days Due to COVID-19 Pandemic CO Colombia 59 IN India 59 MD Republic of Moldova 59 PA Panama 59 ZA South Africa 59

Fees Payable under the PCT BR Brazil 59 IN India 60

Erroneously Filed Elements and Parts: Notifications by Receiving Offices of Incompatibility with National Laws under PCT Rule 20.8(a-bis) CL Chile 61

Erroneously Filed Elements and Parts: Notifications by Designated Offices of Incompatibility with National Laws under PCT Rule 20.8(b-bis) CL Chile 62

Official Notices (PCT Gazette) – 2 April 2020

58


BR Brazil

The National Institute of Industrial Property (Brazil) has notified the International Bureau of a change to its telephone numbers, which are now as follows:

Telephone: (55-21) 3037 36 86 (55-21) 3037 37 42

[Updating of Annex B1(BR) of the PCT Applicant’s Guide]

IN India

The Indian Patent Office has notified the International Bureau of a change to the telephone numbers of its New Delhi office, which are now as follows:

Telephone: (91-11) 25 30 02 00 (91-11) 25 30 03 35 (PCT Section)

[Updating of Annex B1(IN) of the PCT Applicant’s Guide]

INFORMATION ON CONTRACTING STATES: NOTIFICATIONS FROM OFFICES CONCERNING EXCEPTIONAL NON-WORKING DAYS DUE TO COVID-19 PANDEMIC

Due to circumstances relating the COVID-19 pandemic, the International Bureau has been notified that a number of PCT Offices are closed to the public for the purposes of the transaction of official business.

Consequently, pursuant to PCT Rule 80.5, if the expiration of any period during which any document or fee in connection with an international application is required to reach the Office falls on a day on which such Office is not open to the public for the aforementioned purposes, that period is extended so as to expire on the next subsequent day on which the respective Office reopens to the public for the purposes of the transaction of official business.

As regards the delay or loss in the mail of documents or letters addressed to an Office, or other possible reasons for delay in meeting time limits, due to closures relating to the COVID-19 pandemic, refer to PCT Rules 82.1 and 82quater, respectively.

Additional information concerning Offices’ closed dates, as furnished to the International Bureau by each respective Office, is available on the WIPO website at: https://www.wipo.int/pct/dc/closeddates/

The International Bureau has been notified that the following Offices are or were not open to the public for the purposes of the transaction of official business, under PCT Rule 80.5(i), due to circumstances relating to the COVID-19 pandemic, as follows:


59

Office Code and Name Closed Dates Notified CO Superintendence of Industry and Commerce (Colombia) 16 to 31 March 2020 IN Indian Patent Office 25 March to 14 April 2020 MD State Agency on Intellectual Property (Republic of Moldova) 30 March to 3 April 2020 PA Directorate General of the Industrial Property Registry 17 March 2020 until further (DIGERPI) (Panama) notice ZA Companies and Intellectual Property Commission (CIPC) (South Africa) 27 March to 30 April 2020


BR Brazil

Pursuant to PCT Rule 16.1(d), new equivalent amounts in euros (EUR) have been established for the search fee for an international search carried out by the National Institute of Industrial Property (Brazil). These amounts, applicable from 1 June 2020, are EUR 304 when filing online and EUR 455 when filing on paper.



60

IN India

The Indian Patent Office has notified the International Bureau of new amounts of one of the components of the filing fee, in Indian rupees (INR), payable to the Office in its capacity as designated (or elected) Office. These amounts, applicable since 16 May 2016, are as follows:

Natural person Small entity, Others, and/or alone or with alone or with start-up natural person(s) natural and/or start-up person(s) and/or start-up and/or small entity

Filing fee:1

– For each page of sequence listing of nucleotides and/or amino acid sequences: – electronic filing INR 1602 INR 4002 INR 8003 – paper filing Not allowed Not allowed Not allowed

[Updating of the National Chapter, Summary (IN) of the PCT Applicant’s Guide]

1 Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1), or at the time of any earlier

express request by the applicant to proceed earlier with the national phase. 2 Subject to a maximum of INR 24,000. 3 Subject to a maximum of INR 120,000.


61




CL Chile

In accordance with new PCT Rule 20.8(a-bis), which will enter into force on 1 July 2020, the National Institute of Industrial Property (Chile) has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) are not compatible with the national law applied by the Office in its capacity as receiving Office.






62




CL Chile

In accordance with new PCT Rule 20.8(b-bis), which will enter into force on 1 July 2020, the National Institute of Industrial Property (Chile) has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) are not compatible with the national law applied by the Office in its capacity as designated Office.



63



Page

Receiving Offices DK Denmark 64

Erroneously Filed Elements and Parts: Notifications by Receiving Offices of Incompatibility with National Laws under PCT Rule 20.8(a-bis) DE Germany 65 FR France 65

Erroneously Filed Elements and Parts: Notifications by Designated Offices of Incompatibility with National Laws under PCT Rule 20.8(b-bis) CN China 66 DE Germany 66



64

RECEIVING OFFICES

DK Denmark

On 9 March 2020, the Danish Patent and Trademark Office provided additional information, in its capacity as competent receiving Office for nationals and residents of Denmark, in the event of national security considerations.

International applications for inventions that relate to war material or processes for the manufacture of war material and are owned by a person or enterprise residing in Denmark, or by a Danish institution, must be filed through the Danish Patent and Trademark Office and may only be granted patent protection, as “secret patents”, with authorization from the (Danish) Minister of Defence, in accordance with sections 2 and 2a of the Consolidate Secret Patents Act and section 70 of the (Danish) Patents Act.

[Updating of Annex B1(DK) of the PCT Applicant’s Guide]

Furthermore, the Office provided additional guidance concerning representation before the Office.

In accordance with section 12 of the (Danish) Patents Act, the Danish Patent and Trademark Office may invite the applicant to appoint an agent residing in the European Economic Area (EEA) to represent him in all matters relating to the application.

[Updating of Annex C(DK) of the PCT Applicant’s Guide]


65




DE Germany

In accordance with new PCT Rule 20.8(a-bis), which will enter into force on 1 July 2020, the German Patent and Trade Mark Office has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) are not compatible with the national law applied by the Office in its capacity as receiving Office.

FR France

In accordance with new PCT Rule 20.8(a-bis), which will enter into force on 1 July 2020, the National Institute of Industrial Property (INPI) (France) has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) cannot be considered to be compatible with the national law applied by the Office in its capacity as receiving Office.






66




CN China

In accordance with new PCT Rule 20.8(b-bis), which will enter into force on 1 July 2020, the China National Intellectual Property Administration (CNIPA) has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) are not compatible with the national law applied by the Office in its capacity as designated Office.

DE Germany

In accordance with new PCT Rule 20.8(b-bis), which will enter into force on 1 July 2020, the German Patent and Trade Mark Office has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) are not compatible with the national law applied by the Office in its capacity as designated Office.

4 Refer to footnote 1. 5 Refer to footnote 2. 6 Refer to footnote 3.


67



Page

Excuse of Delay in Meeting PCT Time Limits during COVID-19 Pandemic: Applicability of PCT Rule 82quater.1 and Additional Special Measures Note Prepared by the International Bureau: Interpretative Statement and Recommended Practice 68

Information on Contracting States PL Poland 69

Fees Payable under the PCT AU Australia 69 BR Brazil 69 CA Canada 69 IN India 70 KR Republic of Korea 70 RU Russian Federation 70 SG Singapore 71

Receiving Offices PL Poland 71



68

EXCUSE OF DELAY IN MEETING PCT TIME LIMITS DURING COVID-19 PANDEMIC: APPLICABILITY OF PCT RULE 82QUATER.1 AND ADDITIONAL SPECIAL MEASURES

NOTE PREPARED BY THE INTERNATIONAL BUREAU: INTERPRETATIVE STATEMENT AND RECOMMENDED PRACTICE

Pursuant to PCT Rule 82quater.1, where any interested party offers evidence that a time limit fixed in the Regulations under the PCT (“the Regulations”) for performing an action before an Office, Authority or the International Bureau was not met due to war, revolution, civil disorder, strike, natural calamity, general unavailability of electronic communications services or other like reason, and that the relevant action was taken as soon as reasonably possible, the delay in meeting the relevant time limit may1 be excused.

In the view of the International Bureau, the current global COVID-19 pandemic should be considered to be a “natural calamity” or “other like reason” under PCT Rule 82quater.1(a).

Consequently, the International Bureau, including in its capacity as receiving Office, shall treat favorably any request, under PCT Rule 82quater.1(a), which cites reasons relating to the COVID-19 pandemic for the failure to meet a time limit fixed in the Regulations, and shall not require the interested party to provide evidence to it that the COVID-19 pandemic affected the locality in which the interested party resides, has a place of business, or is staying.

Furthermore, the receiving Office of the International Bureau shall delay until 31 May 2020 the issuance of notifications concerning an international application considered to be withdrawn (Form PCT/RO/117).

The International Bureau urges all PCT Offices and Authorities to adopt a similar interpretation and practice. Furthermore, the International Bureau recommends the following:

‒ for at least one month (with the possibility of further extension), notifications that an international application is considered to be withdrawn only be issued with respect to deadlines that had previously expired for at least two months; and

‒ receiving Offices waive the charging of late payment fees (under PCT Rule 16bis.2).

Please note the “Interpretative statement and Recommended Patent Cooperation Treaty (PCT) Practice Changes in light of the COVID-19 Pandemic” of 9 April 2020, available at: https://www.wipo.int/pct/en/news/2020/news_0009.html

1 To benefit from the relief provided for under Rule 82quater.1, the interested party would normally be required to

address such evidence to the competent Office, Authority or the International Bureau, as the case may be, not later than six months after the expiration of the time limit applicable in the given case, in addition to having taken the relevant action as soon as reasonably possible. If such circumstances are proven to the satisfaction of the addressee, delay in meeting the time limit shall be excused.


69


PL Poland

The Patent Office of the Republic of Poland has notified the International Bureau of a change to its e-mail address, which is now as follows:

E-mail: [email protected]

[Updating of Annex B1(PL) of the PCT Applicant’s Guide]


AU Australia

Pursuant to PCT Rule 16.1(d), a new equivalent amount in Swiss francs (CHF) has been established for the search fee for an international search carried out by the Australian Patent Office. This amount, applicable from 1 June 2020, is CHF 1,242.

[Updating of Annex D(AU) of the PCT Applicant’s Guide]

BR Brazil

Pursuant to PCT Rule 16.1(d), new equivalent amounts in Swiss francs (CHF) have been established for the search fee for an international search carried out by the National Institute of Industrial Property (Brazil). These amounts, applicable from 1 June 2020, are CHF 374 when filing online, and CHF 470 when filing on paper.


CA Canada

Pursuant to PCT Rule 16.1(d), a new equivalent amount in Swiss francs (CHF) has been established for the search fee for an international search carried out by the Canadian Intellectual Property Office. This amount, applicable from 1 June 2020, is CHF 1,085.

[Updating of Annex D(CA) of the PCT Applicant’s Guide]


70

IN India

Pursuant to PCT Rule 16.1(d), new equivalent amounts in Swiss francs (CHF) and euros (EUR) have been established for the search fee for an international search carried out by the Indian Patent Office. These amounts, applicable from 1 June 2020, are CHF 128 and EUR 120, or CHF 32 and EUR 30 in the case of filing by an individual.

[Updating of Annex D(IN) of the PCT Applicant’s Guide]

KR Republic of Korea

Pursuant to PCT Rule 16.1(d), new equivalent amounts in Swiss francs (CHF) have been established for the search fee for an international search carried out by the Korean Intellectual Property Office. These amounts, applicable from 1 June 2020, are CHF 353 for searches carried out in Korean and CHF 941 for searches carried out in English.

[Updating of Annex D(KR) of the PCT Applicant’s Guide]

RU Russian Federation

Pursuant to PCT Rule 16.1(d), new equivalent amounts in Swiss francs (CHF) and euros (EUR) have been established for the search fee for an international search carried out by the Federal Service for Intellectual Property (Rospatent) (Russian Federation). These amounts, applicable from 1 June 2020, are CHF 104 and EUR 97 for searches carried out in Russian, and CHF 489 and EUR 455 for searches carried out in English.

[Updating of Annex D(RU) of the PCT Applicant’s Guide]

Furthermore, pursuant to PCT Rule 45bis.3(b), new equivalent amounts in Swiss francs (CHF) have been established for the supplementary search fee for a supplementary international search carried out by the Office. These amounts, also applicable from 1 June 2020, are CHF 144 and CHF 231 (the latter amount applies where a declaration referred to in PCT Article 17(2)(a) has been made by the International Searching Authority because of subject matter referred to in PCT Rule 39.1(iv) (methods of treatment)).

[Updating of Annex SISA(RU) of the PCT Applicant’s Guide]


71

SG Singapore

Pursuant to PCT Rule 16.1(d), a new equivalent amount in Swiss francs (CHF) has been established for the search fee for an international search carried out by the Intellectual Property Office of Singapore. This amount, applicable from 1 June 2020, is CHF 1,509.

[Updating of Annex D(SG) of the PCT Applicant’s Guide]

Furthermore, pursuant to PCT Rule 45bis.3(b), a new equivalent amount in Swiss francs (CHF) has been established for the supplementary search fee for a supplementary international search carried out by the Office. This amount, also applicable from 1 June 2020, is CHF 1,509.

[Updating of Annex SISA(SG) of the PCT Applicant’s Guide]

RECEIVING OFFICES

PL Poland

The Patent Office of the Republic of Poland has notified the International Bureau of a change concerning the number of paper copies of the international application required by it – two copies are now required, instead of three.

[Updating of Annex C(PL) of the PCT Applicant’s Guide]


72



Page

Transmittal of PCT-Related Documents during COVID-19 Pandemic Note Prepared by the International Bureau: Temporary Suspension of Transmittal of PCT-Related Documents on Paper 73

Information on Contracting States: Notifications from Offices Concerning Exceptional Non-Working Days Due to COVID-19 Pandemic CU Cuba 74

Fees Payable under the PCT AT Austria 74 AU Australia 75 CA Canada 75 EP European Patent Organisation 76 IL Israel 76 IS Iceland 76 KR Republic of Korea 76 NO Norway 77 RU Russian Federation 77 SG Singapore 78 ZA South Africa 78



73

TRANSMITTAL OF PCT-RELATED DOCUMENTS DURING COVID-19 PANDEMIC

NOTE PREPARED BY THE INTERNATIONAL BUREAU: TEMPORARY SUSPENSION OF TRANSMITTAL OF PCT-RELATED DOCUMENTS ON PAPER

Due to the effects of the COVID-19 pandemic on the operations of the International Bureau and postal systems worldwide, the International Bureau, including in its capacity as PCT receiving Office, has suspended the transmittal of PCT-related documents on paper, with effect since 30 March 2020.

Consequently, the International Bureau will only transmit PCT-related documents electronically via e-mail, until further notice. It is to be noted that PCT-related documents concerning individual international applications are available via ePCT1 or, after international publication, on PATENTSCOPE2.

Furthermore, due to reduced postal services and scanning operations at the International Bureau, all PCT users are urged to communicate with the International Bureau exclusively via electronic means.

PCT users who have not yet provided the International Bureau with an email address in relation to their international application(s), are encouraged to provide such information as soon as possible by:

‒ populating the information directly in relation to pending international applications in ePCT for which they have the relevant access rights;

‒ using the PCT Contingency Upload service;3 ‒ sending an email to one of the following addresses: [email protected] or

[email protected]; or ‒ using the WIPO Contact Us page4 for PCT customers.

For additional information, refer to the PCT System newsfeed, dated 30 March 2020, available at:

https://www.wipo.int/pct/en/news/2020/news_0008.html

1 Available at: https://pct.wipo.int/ePCT 2 Available at: https://patentscope.wipo.int 3 Available at: https://pct.wipo.int/ePCTExternal/pages/UploadDocument.xhtml 4 Available at: https://www3.wipo.int/contact/en/area.jsp?area=pct


74


CU Cuba

Due to circumstances relating the COVID-19 pandemic, the Cuban Industrial Property Office has notified the International Bureau that it is closed to the public for the purposes of the transaction of official business from 14 April 2020 until further notice.

Consequently, pursuant to PCT Rule 80.5(i), if the expiration of any period during which any document or fee in connection with an international application was required to reach the Office fell on or after 14 April 2020, that period is extended so as to expire on the next subsequent day on which the Office reopens to the public for the purposes of the transaction of official business.

As regards the delay or loss in the mail of documents or letters addressed to the Office, or other possible reasons for delay in meeting time limits, due to closures relating to the COVID-19 pandemic, refer to PCT Rules 82.1 and 82quater, respectively, and to the Official Notices (PCT Gazette) of 16 April 2020 (page 68).

Additional information concerning closed dates, as furnished to the International Bureau by the Office, is available at:

https://www.wipo.int/pct/dc/closeddates/


AT Austria

Pursuant to PCT Rule 16.1(d), a new equivalent amount, in South African rand (ZAR), has been established for the search fee for an international search carried out by the Austrian Patent Office. This amount, applicable from 1 June 2020, is ZAR 35,130.

[Updating of Annex D(AT) of the PCT Applicant’s Guide]


75

AU Australia

New equivalent amounts in Australian dollars (AUD) have been established for the international filing fee and the fee per sheet in excess of 30 (pursuant to PCT Rule 15.2(d)), for reductions under item 4 of the PCT Schedule of Fees, as well as for the handling fee (pursuant to PCT Rule 57.2(d)). These new amounts, applicable from 1 June 2020, are as follows:

International filing fee: AUD 2,356 Fee per sheet in excess of 30 AUD 27 Reductions (under the Schedule of Fees, item 4): Electronic filing (the request being

in character-coded format) AUD 354 Electronic filing (the request,

description, claims and abstract being in character-coded format) AUD 531

Handling fee AUD 354

[Updating of Annexes C(AU) and E(AU) of the PCT Applicant’s Guide]

CA Canada

New equivalent amounts in Canadian dollars (CAD) have been established for the international filing fee and the fee per sheet in excess of 30 (pursuant to PCT Rule 15.2(d)), for reductions under item 4 of the PCT Schedule of Fees, as well as for the handling fee (pursuant to PCT Rule 57.2(d)). These new amounts, applicable from 1 June 2020, are as follows:

International filing fee CAD 1,961 Fee per sheet in excess of 30 CAD 22 Reductions (under the Schedule of Fees, item 4): Electronic filing (the request being

in character-coded format) CAD 295 Electronic filing (the request,

description, claims and abstract being in character-coded format) CAD 442

Handling fee CAD 295

[Updating of Annexes C(CA) and E(CA) of the PCT Applicant’s Guide]


76


Pursuant to PCT Rule 16.1(d), a new equivalent amount in South African rand (ZAR) has been established for the search fee for an international search carried out by the European Patent Office (EPO). This amount, applicable from 1 June 2020, is ZAR 35,130.


IL Israel

A new equivalent amount in New Israeli shekels (ILS) has been established for the handling fee, pursuant to PCT Rule 57.2(d). This amount, applicable from 1 June 2020, is ILS 743.

[Updating of Annex E(IL) of the PCT Applicant’s Guide]

IS Iceland

New equivalent amounts in Icelandic kronor (ISK) have been established for the international filing fee and the fee per sheet in excess of 30 (pursuant to PCT Rule 15.2(d)), as well as for reductions under item 4 of the PCT Schedule of Fees. These amounts, applicable from 1 June 2020, are as follows:

International filing fee ISK 195,100 Fee per sheet in excess of 30 ISK 2,200 Reductions (under the Schedule of Fees, item 4): Electronic filing (the request being

in character-coded format) ISK 29,300 Electronic filing (the request,

description, claims and abstract being in character-coded format) ISK 44,000

[Updating of Annex C(IS) of the PCT Applicant’s Guide]


A new equivalent amount in Korean won (KRW) has been established for the handling fee, pursuant to PCT Rule 57.2(d). This amount, applicable from 1 June 2020, is KRW 255,000.

[Updating of Annex E(KR) of the PCT Applicant’s Guide]


77

NO Norway

New equivalent amounts in Norwegian kroner (NOK) have been established for the international filing fee and the fee per sheet in excess of 30 (pursuant to PCT Rule 15.2(d)), as well as for reductions under item 4 of the PCT Schedule of Fees. These amounts, applicable from 1 June 2020, are as follows:

International filing fee NOK 15,300 Fee per sheet in excess of 30 NOK 170 Reductions (under the Schedule of Fees, item 4): Electronic filing (the request being

in character-coded format) NOK 2,300 Electronic filing (the request,

description, claims and abstract being in character-coded format) NOK 3,450

[Updating of Annex C(NO) of the PCT Applicant’s Guide]


Pursuant to PCT Rule 16.1(d), new equivalent amounts in US dollars (USD) have been established for the search fee for an international search carried out by the Federal Service for Intellectual Property (Rospatent) (Russian Federation). These amounts, applicable from 1 June 2020, are USD 106 for searches carried out in Russian and USD 501 for searches carried out in English.



78

SG Singapore

New equivalent amounts in Singapore dollars (SGD) have been established for the international filing fee and the fee per sheet in excess of 30 (pursuant to PCT Rule 15.2(d)), for reductions under item 4 of the PCT Schedule of Fees, as well as for the handling fee (pursuant to PCT Rule 57.2(d)). These new amounts, applicable from 1 June 2020, are as follows:

International filing fee: SGD 1,974 Fee per sheet in excess of 30 SGD 22 Reductions (under the Schedule of Fees, item 4): Electronic filing (the request being

in character-coded format) SGD 297 Electronic filing (the request,

description, claims and abstract being in character-coded format) SGD 445

Handling fee SGD 297

[Updating of Annexes C(SG) and E(SG) of the PCT Applicant’s Guide]

ZA South Africa

New equivalent amounts in South African rand (ZAR) have been established for the international filing fee and the fee per sheet in excess of 30 (pursuant to PCT Rule 15.2(d)), as well as for reductions under item 4 of the PCT Schedule of Fees. These amounts, applicable from 1 June 2020, are as follows:

International filing fee ZAR 24,090 Fee per sheet in excess of 30 ZAR 270 Reductions (under the Schedule of Fees, item 4): Electronic filing (the request being

in character-coded format) ZAR 3,620 Electronic filing (the request,

description, claims and abstract being in character-coded format) ZAR 5,430

[Updating of Annex C(ZA) of the PCT Applicant’s Guide]


79



Page

International Searching Authorities International Preliminary Examining Authorities EP European Patent Organisation 81

Information on Contracting States IT Italy 82

Information on Contracting States: Notifications from Offices Concerning Exceptional Non-Working Days Due to COVID-19 Pandemic MX Mexico 82

Fees Payable under the PCT AU Australia 83 EP European Patent Organisation 83 KR Republic of Korea 83 US United States of America 83

Designated (or Elected) Offices IT Italy 84

Incorporation by Reference of Elements or Parts: Notifications by Receiving Offices of Compatibility with National Laws of PCT Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 IT Italy 84



80

Incorporation by Reference of Elements or Parts: Notifications by Designated (or Elected) Offices of Compatibility with National Laws of PCT Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 IT Italy 84

Erroneously Filed Elements and Parts: Notifications by Receiving Offices of Incompatibility with National Laws under PCT Rule 20.8(a-bis) ES Spain 85

Erroneously Filed Elements and Parts: Notifications by Designated Offices of Incompatibility with National Laws under PCT Rule 20.8(b-bis) ES Spain 86

Restoration of Right of Priority: Notifications by Receiving Offices of Compatibility with National Laws of PCT Rule 26bis.3(a) to (i) IT Italy 87

Effect of Restoration of Right of Priority by Receiving Offices: Notifications by Designated Offices of Compatibility with National Laws of PCT Rule 49ter.1(a) to (f) IT Italy 87

Restoration of Right of Priority: Notifications by Designated Offices of Compatibility with National Laws of PCT Rule 49ter.2(a) to (g) IT Italy 87

Filing and Processing in Electronic Form of International Applications: Notifications by Receiving Offices EP European Patent Organisation 88

Deposits of Microorganisms and Other Biological Material: Institutions with Which Deposits May Be Made CN China 88


81



Agreement between the European Patent Office and the International Bureau of the World Intellectual Property Organization1 – Amendment to Annex D

On 17 April 2020, the European Patent Office (EPO) notified the International Bureau, in accordance with Articles 11(3)(iii) and 11(4)(ii) of the above-mentioned Agreement, of an amendment to Part I of Annex D thereof. This amendment, which will enter into force on 1 July 2020, consists of a new “Additional fee” payable under new PCT Rule 40bis and applicable in conjunction with new PCT Rule 20.5bis, which will also enter into force on 1 July 2020.2

The amended Annex D will read as follows:



Kind of fee or charge Amount (euro)

Search fee (Rule 16.1(a)) [No change] Additional fee (Rules 40.2(a) and 40bis3) 1,7754 Supplementary search fees (Rule 45bis.3(a)) [No change] Preliminary examination fee (Rule 58.1(b)) [No change] Additional fee (Rule 68.3(a)) [No change] Protest fee (Rules 40.2(e) and 68.3(e)) [No change] Review fee (Rule 45bis.6(c)) [No change] Late furnishing fee for sequence listings (Rules 13ter.1(c) and 13ter.2) [No change]


1 Available on the WIPO website at: www.wipo.int/pct/en/texts/agreements/ag_ep.pdf 2 The complete text of new Rules 20.5bis and 40bis is reproduced in Annex III of document number PCT/A/51/2,

which is available online at: https://www.wipo.int/edocs/mdocs/govbody/en/pct_a_51/pct_a_51_2.pdf 3 This fee is applied in conjunction with PCT Rule 20.5bis (see decision of the EPO’s Administrative Council of

27 March 2020 (OJ EPO 2020, A36). 4 This fee is reduced by 75% under certain conditions (see decision of the EPO’s Administrative Council of

12 December 2019 (OJ EPO 2020, A4)). See Part II, paragraph (4), for further details.


82


IT Italy

The Italian Patent and Trademark Office has notified the International Bureau that, pursuant to the adoption in Italy of Ministerial Decree 13/11/20195, PCT Article 45(2)6 is no longer applicable to the designation or election of Italy, with respect to international applications filed on or after 1 July 2020.

Consequently, any designation or election of Italy in an international application filed on or after 1 July 2020 shall constitute an indication under PCT Rule 4.9(iii) that the international application is for the grant of a regional (European) patent and also a national patent in Italy.


MX Mexico

Due to circumstances relating to the COVID-19 pandemic, the Mexican Institute of Industrial Property has notified the International Bureau that it is closed to the public for the purposes of the transaction of official business from 27 March to 30 May 2020.

Consequently, pursuant to PCT Rule 80.5(i), if the expiration of any period during which any document or fee in connection with an international application was required to reach the Office fell on one of the aforementioned days, that period is extended so as to expire on 1 June 2020, or on the next subsequent day on which the Office reopens to the public for the purposes of the transaction of official business.




5 Refer to Gazzetta Ufficiale della Repubblica Italiana (No. 283) of 3 December 2019. 6 PCT Article 45 states: “The national law of the said designated or elected State may provide that any designation

or election of such State in the international application shall have the effect of an indication of the wish to obtain a regional patent under the regional patent treaty.”


83


AU Australia

Pursuant to PCT Rule 16.1(d), new equivalent amounts in euros (EUR), Korean won (KRW), Singapore dollars (SGD), and US dollars (USD) have been established for the search fee for an international search carried out by the Australian Patent Office. These amounts, applicable from 1 July 2020, are EUR 1,241, KRW 1,643,000, SGD 1,920 and USD 1,341, respectively.



The European Patent Office (EPO), in its capacity as International Searching Authority, has notified the International Bureau of the establishment of a new additional fee, under new PCT Rule 40bis and applicable in conjunction with new PCT Rule 20.5bis7.

This new fee, which will be applicable from 1 July 2020, is EUR 1,775.



Pursuant to PCT Rule 16.1(d), new equivalent amounts in Australian dollars (AUD) have been established for the search fee for an international search carried out by the Korean Intellectual Property Office. These amounts, applicable from 1 July 2020, are AUD 603 for searches carried out in Korean and AUD 1,607 for searches carried out in English.


US United States of America

Pursuant to PCT Rule 16.1(d), new equivalent amounts in New Zealand dollars (NZD) and South African rand (ZAR) have been established for the search fee for an international search carried out by the United States Patent and Trademark Office (USPTO). These amounts, applicable from 1 July 2020, are NZD 3,496 and ZAR 38,860, respectively, for an entity other than a small or micro entity; NZD 1,748 and ZAR 19,430, respectively, for a small entity; and NZD 874 and ZAR 9,710, respectively, for a micro entity.

[Updating of Annex D(US) of the PCT Applicant’s Guide]

7 The complete text of new Rules 20.5bis and 40bis is reproduced in Annex III of document number PCT/A/51/2,

which is available online at: https://www.wipo.int/edocs/mdocs/govbody/en/pct_a_51/pct_a_51_2.pdf


84


IT Italy

Following the adoption in Italy of Ministerial Decree 13/11/2019 (refer to this issue of the Official Notices (PCT Gazette), page 82), the Italian Patent and Trademark Office has notified the International Bureau that the time limits for entry into the national phase under PCT Articles 22(1) and 39(1)(a) are 30 months from the priority date (or where the international application does not contain any priority claim under PCT Article 8, the international filing date of such application).

Furthermore, the Office notified that, under PCT Articles 22(1) and 39(1)(a), for international applications filed on or after 1 July 2020, a translation of the international application into Italian is required.

INCORPORATION BY REFERENCE OF ELEMENTS OR PARTS: NOTIFICATIONS BY RECEIVING OFFICES OF COMPATIBILITY WITH NATIONAL LAWS OF PCT RULES 20.3(a)(ii) AND (b)(ii), 20.5(a)(ii) AND (d), AND 20.6

IT Italy

Further to its notification8 of the incompatibility of the national law of Italy under PCT Rule 20.8(a) (refer to PCT Gazette No. 26/2006 of 26 June 2006, page 18992), the Italian Patent and Trademark Office, in its capacity as receiving Office, has notified the International Bureau that its national law is now compatible with PCT Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 (concerning defects under PCT Article 11(1), missing parts, and incorporation by reference of elements of parts), which will be applicable with respect to international applications filed on or after 1 July 2020.

INCORPORATION BY REFERENCE OF ELEMENTS OR PARTS: NOTIFICATIONS BY DESIGNATED OFFICES OF COMPATIBILITY WITH NATIONAL LAWS OF PCT RULES 20.3(a)(ii) AND (b)(ii), 20.5(a)(ii) AND (d), AND 20.6

IT Italy

Following the adoption in Italy of Ministerial Decree 13/11/2019 (refer to this issue of the Official Notices (PCT Gazette), page 82), the Italian Patent and Trademark Office, in its capacity as designated Office, has notified the International Bureau that its national law is compatible with PCT Rules 20.3(a)(ii) and (b)(ii), 20.5(a)(ii) and (d), and 20.6 (concerning defects under PCT Article 11(1), missing parts, and incorporation by reference of elements of parts), with respect to international applications filed on or after 1 July 2020.

8 The current list of PCT reservations, declarations, notifications and incompatibilities is available on the WIPO website

at: https://www.wipo.int/pct/en/texts/reservations/res_incomp.html


85

ERRONEOUSLY FILED ELEMENTS AND PARTS: NOTIFICATIONS BY RECEIVING OFFICES OF INCOMPATIBILITY WITH NATIONAL LAWS UNDER PCT RULE 20.8(a-bis)



ES Spain

In accordance with new PCT Rule 20.8(a-bis), which will enter into force on 1 July 2020, the Spanish Patent and Trademark Office has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) are not compatible with the national law applied by the Office in its capacity as receiving Office.






86

ERRONEOUSLY FILED ELEMENTS AND PARTS: NOTIFICATIONS BY DESIGNATED OFFICES OF INCOMPATIBILITY WITH NATIONAL LAWS UNDER PCT RULE 20.8(b-bis)



ES Spain

In accordance with new PCT Rule 20.8(b-bis), which will enter into force on 1 July 2020, the Spanish Patent and Trademark Office has notified the International Bureau that new PCT Rules 20.5bis(a)(ii) and 20.5bis(d) are not compatible with the national law applied by the Office in its capacity as designated Office.

12 Refer to footnote 8. 13 Refer to footnote 9. 14 Refer to footnote 10.


87

RESTORATION OF RIGHT OF PRIORITY: NOTIFICATIONS BY RECEIVING OFFICES OF COMPATIBILITY WITH NATIONAL LAWS OF PCT RULE 26bis.3(a) TO (i)

IT Italy

Further to its notification15 of the incompatibility of the national law of Italy under PCT Rule 26bis.3(j) (refer to PCT Gazette No. 26/2006 of 26 June 2006, page 18994), the Italian Patent and Trademark Office, in its capacity as receiving Office, has notified the International Bureau that its national law is now compatible with PCT Rule 26bis.3(a) to (i) (concerning restoration of the right of priority by receiving Offices), which will be applicable with respect to international applications filed on or after 1 July 2020.

[Updating of Annex C(IT) of the PCT Applicant’s Guide]

EFFECT OF RESTORATION OF RIGHT OF PRIORITY BY RECEIVING OFFICES: NOTIFICATIONS BY DESIGNATED OFFICES OF COMPATIBILITY WITH NATIONAL LAWS OF PCT RULE 49ter.1(a) TO (d)

IT Italy

Following the adoption of in Italy of Ministerial Decree 13/11/2019 (refer to this issue of the Official Notices (PCT Gazette), page 82), the Italian Patent and Trademark Office has notified the International Bureau that the national law applied by it as designated Office under the PCT is compatible with PCT Rule 49ter.1(a) to (d) (concerning the effect of restoration of right of priority by receiving Offices), with respect to international applications filed on or after 1 July 2020.

RESTORATION OF RIGHT OF PRIORITY: NOTIFICATIONS BY DESIGNATED OFFICES OF COMPATIBILITY WITH NATIONAL LAWS OF PCT RULE 49ter.2(a) TO (g)

IT Italy

Following the adoption in Italy of Ministerial Decree 13/11/2019 (refer to this issue of the Official Notices (PCT Gazette), page 82), the Italian Patent and Trademark Office, in its capacity as designated Office, has notified the International Bureau that its national law is compatible with PCT Rule 49ter.2(a) to (g) (concerning restoration of the right of priority by designated Offices), with respect to international applications filed on or after 1 July 2020.

15 The current list of PCT reservations, declarations, notifications and incompatibilities is available on the WIPO website

at: https://www.wipo.int/pct/en/texts/reservations/res_incomp.html


88



Pursuant to PCT Rule 89bis.1(d) and Sections 710(b) and 713 of the Administrative Instructions under the PCT, the European Patent Office (EPO), in its capacity as receiving Office, has notified the International Bureau of a change to its notification published in the Official Notices (PCT Gazette) of 3 November 2016, pages 221 et seq.

In particular, as from 1 July 2020, the EPO, in its capacity as receiving Office, will no longer accept the filing of international applications in electronic form using the PCT-SAFE software.

Consequently, as of 1 July 2020, the available means for filing international applications in electronic form with the EPO are: EPO Online Filing, EPO web-form filing service, EPO case management system (CMS), and ePCT-Filing.

[Updating of Annex C(EP) of the PCT Applicant’s Guide]

DEPOSITS OF MICROORGANISMS AND OTHER BIOLOGICAL MATERIAL: INSTITUTIONS WITH WHICH DEPOSITS MAY BE MADE

CN China

Pursuant to PCT Rule 13bis.7(b), the International Bureau has been notified of a depositary institution having acquired the status of international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure with which deposits of microorganisms and other biological material may be made, with effect since 1 January 2016, as follows:

Guangdong Microbial Culture Collection Center (GDMCC) Guangdong Institute of Microbiology No.59 Building, No.100 Xianliezhong Road Guangzhou 510075 The People's Republic of China

[Updating of Annex L of the PCT Applicant’s Guide]


89

OFFICIAL NOTICES (PCT GAZETTE) 7 May 2020


Page

Information on Contracting States: Notifications from Offices Concerning Exceptional Non-Working Days Due to COVID-19 Pandemic MD Republic of Moldova 90

Fees Payable under the PCT BR Brazil – Corrigendum 91 BR Brazil 91 CA Canada 91 EP European Patent Organisation 91 HU Hungary 92 IN India 92 NZ New Zealand 93 RU Russian Federation 93 SE Sweden 93 XN Nordic Patent Institute 94

Restoration of the Right of Priority: Notifications under PCT Rules 26bis.3(i) and 49ter.2(g) IT Italy 94


Official Notices (PCT Gazette) – 7 May 2020

90


MD Moldova

Further to the notification regarding closure to the public of the State Agency on Intellectual Property (Republic of Moldova) due to circumstances relating to the COVID-19 pandemic, as published in the Official Notices (PCT Gazette) of 2 April 2020 (pages 58 and 59), the Office has notified the International Bureau that the aforementioned closure has been extended.

Therefore, for the period from 30 March to 30 April 2020, the Office was closed to the public for the transaction of official business on the following days:

– 30 March 2020 to 3 April 2020;

– 7 to 17 April 2020; and

– 21 to 30 April 2020.

Consequently, pursuant to PCT Rule 80.5(i), if the expiration of any period during which any document or fee in connection with an international application was required to reach the Office fell on one of the aforementioned days, that period is extended so as to expire on the next subsequent day on which the Office reopens to the public for the purposes of the transaction of official business.





91


BR Brazil – Corrigendum

The information published in the Official Notices (PCT Gazette) of 16 April 2020 (page 69) contained an error concerning the new equivalent amount, in Swiss francs (CHF), of the search fee when filing online for an international search carried out by the National Institute of Industrial Property (Brazil).

As from 1 June 2020, the new equivalent amounts of the search fee are CHF 314 when filing online and CHF 470 when filing on paper.


BR Brazil

Pursuant to PCT Rule 16.1(d), new equivalent amounts in US dollars (USD) have been established for the search fee for an international search carried out by the National Institute of Industrial Property (Brazil). These amounts, applicable from 1 July 2020, are USD 322 when filing online, and USD 483 when filing on paper.


CA Canada

Pursuant to PCT Rule 16.1(d), a new equivalent amount in US dollars (USD) has been established for the search fee for an international search carried out by the Canadian Intellectual Property Office. This amount, applicable from 1 July 2020, is USD 1,132.



Pursuant to PCT Rule 16.1(d), new equivalent amounts in pounds sterling (GBP), Icelandic kronor (ISK) and Norwegian kroner (NOK) have been established for the search fee for an international search carried out by the European Patent Office (EPO). These amounts, applicable from 1 July 2020, are GBP 1,560, ISK 276,000, and NOK 20,010, respectively.



92

HU Hungary

New equivalent amounts in Hungarian forints (HUF) have been established for the international filing fee and the fee per sheet in excess of 30 (pursuant to PCT Rule 15.2(d)), as well as for reductions under item 4 of the PCT Schedule of Fees. These amounts, applicable from 1 July 2020, are as follows:

International filing fee HUF 458,300 Fee per sheet in excess of 30 HUF 5,200 Reductions (under the Schedule of Fees, item 4): Electronic filing (the request being

in character-coded format) HUF 68,900 Electronic filing (the request,

description, claims and abstract being in character-coded format) HUF 103,400

[Updating of Annex C(HU) of the PCT Applicant’s Guide]

IN India

Pursuant to PCT Rule 16.1(d), new equivalent amounts in US dollars (USD) have been established for the search fee for an international search carried out by the Indian Patent Office. These amounts, applicable from 1 July 2020, are USD 131 and USD 33 (in the case of filing by an individual).

[Updating of Annex D(IN) of the PCT Applicant’s Guide]


93

NZ New Zealand

New equivalent amounts in New Zealand dollars (NZD) have been established for the international filing fee and the fee per sheet in excess of 30 (pursuant to PCT Rule 15.2(d)), as well as for reductions under item 4 of the PCT Schedule of Fees. These amounts, applicable from 1 July 2020, are as follows:

International filing fee NZD 2,288 Fee per sheet in excess of 30 NZD 26 Reductions (under the Schedule of Fees, item 4):

Electronic filing (the request being in character-coded format) NZD 344 Electronic filing (the request, description, claims and abstract being in character-coded format) NZD 516

[Updating of Annex C(NZ) of the PCT Applicant’s Guide]


Pursuant to PCT Rule 16.1(d), new equivalent amounts in euros (EUR) have been established for the search fee for an international search carried out by the Federal Service for Intellectual Property (Rospatent) (Russian Federation). These amounts, applicable from 1 July 2020, are EUR 105 for searches carried out in Russian, and EUR 495 for searches carried out in English.


SE Sweden

Pursuant to PCT Rule 16.1(d), new equivalent amounts in Icelandic kronor (ISK) and Norwegian kroner (NOK) have been established for the search fee for an international search carried out by the Swedish Patent and Registration Office. These amounts, applicable from 1 July 2020, are ISK 276,000 and NOK 20,010, respectively.

[Updating of Annex D(SE) of the PCT Applicant’s Guide]


94

XN Nordic Patent Institute

Pursuant to PCT Rule 16.1(d), new equivalent amounts in Icelandic kronor (ISK) and Norwegian kroner (NOK) have been established for the search fee for an international search carried out by the Nordic Patent Institute. These amounts, applicable from 1 July 2020, are ISK 276,000 and NOK 20,010, respectively.

[Updating of Annex D(XN) of the PCT Applicant’s Guide]

RESTORATION OF THE RIGHT OF PRIORITY: NOTIFICATIONS UNDER PCT RULES 26bis.3(i) AND 49ter.2(g)

IT Italy

Further to its notifications concerning restoration of the right of priority under PCT Rules 26bis.3 and 49ter.2 (refer to the Official Notices (PCT Gazette) of 30 April 2020, page 87), and pursuant to PCT Rules 26bis.3(i) and 49ter.2(g), the Italian Patent and Trademark Office has notified the International Bureau that it will, in its capacity as receiving Office and designated (or elected) Office, apply both the “unintentional” and “due care” criteria to requests for restoration of the right of priority, with respect to international applications filed on or after 1 July 2020.

In addition, the Office notified that there is no fee for requesting restoration of the right of priority under PCT Rules 26bis.3(d) and 49ter.2(d); however, such requests will be subject to a stamp duty (imposta di bollo) of EUR 15.

[Updating of Annex C(IT) of the PCT Applicant’s Guide]


95



Page

Information on Contracting States: Notifications from Offices Concerning Exceptional Non-Working Days Due to COVID-19 Pandemic AG Antigua and Barbuda 96 RO Romania 96

Fees Payable under the PCT AU Australia 97 EP European Patent Organisation 97 NO Norway 97



96


Due to circumstances relating to the COVID-19 pandemic, the International Bureau has been notified that a number of PCT Offices are closed to the public for the purposes of the transaction of official business.

Consequently, pursuant to PCT Rule 80.5, if the expiration of any period during which any document or fee in connection with an international application was required to reach the Office falls on a day on which such Office is not open to the public for the aforementioned purposes, that period shall expire on the next subsequent day on which the Office opens to the public for the purposes of the transaction of official business.

As regards the delay or loss in the mail of documents or letters addressed to an Office or other possible reasons for delay in meeting time limits due to closures relating to the COVID-19 pandemic, refer to PCT Rules 82.1 and 82quater, respectively, and to the Official Notices (PCT Gazette) of 16 April 2020 (page 68).



Further to the notification published in the Official Notices (PCT Gazette) of 2 April 2020 (pages 58 and 59), the International Bureau has been notified that the following Offices were also not open to the public for the purposes of the transaction of official business, under PCT Rule 80.5(i), due to circumstances relating to the COVID-19 pandemic, as follows:

Office Code and Name Closed Dates Notified AG Antigua and Barbuda Intellectual Property and Commerce Office (ABIPCO) 1 to 28 April 2020 RO State Office for Inventions and Trademarks (Romania) 9 to 20 March 2020


97


AU Australia

Pursuant to PCT Rule 16.1(d), a new equivalent amount in South African rand (ZAR) has been established for the search fee for an international search carried out by the Australian Patent Office. This amount, applicable from 1 July 2020, is ZAR 26,420.



Pursuant to PCT Rule 16.1(d), a new equivalent amount in Hungarian forints (HUF) has been established for the search fee for an international search carried out by the European Patent Office (EPO). This amount, applicable from 1 July 2020, is HUF 626,100.


NO Norway

New equivalent amounts in Norwegian kroner (NOK) have been established for the international filing fee and the fee per sheet in excess of 30 (pursuant to PCT Rule 15.2(d)), as well as for reductions under item 4 of the PCT Schedule of Fees. These amounts, applicable from 1 July 2020, are as follows:

International filing fee NOK 14,420 Fee per sheet in excess of 30 NOK 160 Reductions (under the Schedule of Fees, item 4): Electronic filing (the request being

in character-coded format) NOK 2,170 Electronic filing (the request,

description, claims and abstract being in character-coded format) NOK 3,250

[Updating of Annex C(NO) of the PCT Applicant’s Guide]


98



Page

Information on Contracting States CA Canada 99

Filing and Processing in Electronic Form of International Applications: Notification by Receiving Offices SV El Salvador 99



99


CA Canada

The Canadian Intellectual Property Office has notified the International Bureau of an online service for general correspondence, as follows:

Online service (general correspondence): https://www.ic.gc.ca/eic/site/cipointernet -internetopic.nsf/eng/wr01970.html

[Updating of Annex B1(CA) of the PCT Applicant’s Guide]


SV El Salvador

Since 7 January 2002, any receiving Office having the adequate technical systems in place is able to accept the filing of international applications in electronic form in accordance with Part 7 and Annex F of the Administrative Instructions under the PCT containing, respectively, the legal framework and technical standard necessary to enable the implementation of filing and processing in electronic form of international applications, as provided for under PCT Rule 89bis.1.

The National Center of Registries (CNR) (El Salvador), in its capacity as receiving Office, has notified the International Bureau, under PCT Rules 89bis.1(d) and 89bis.2 and pursuant to Sections 710(a) and 713 of the Administrative Instructions under the PCT, that it is prepared to receive and process international applications in electronic form with effect from 15 July 2020, as follows:

As to electronic document formats (Section 710(a)(i)):

– XML (in general; see Annex F, section 3.1.1.1) – WIPO Standard ST.25 (for sequence listings; see Annex F, section 3.1.1.2, and Annex C) – PDF (for files that are referenced by XML files within the international application; see Annex F, section 3.1.2) – TIFF (for files that are referenced by XML files within the international application; see Annex F, section 3.1.3.1) – JPEG (for files that are referenced by XML files within the international application; see Annex F, section 3.1.3.2)

As to means of transmittal (Section 710(a)(i)):

– online filing (see Annex F, section 5 and Appendix III, section 2(d))


100

As to electronic document packaging (Section 710(a)(i)):

– WASP (Wrapped and Signed Package; see Annex F, section 4.2.1)

As to electronic filing software (Section 710(a)(i)):

– ePCT-Filing

As to types of electronic signature (Section 710(a)(i)):

– facsimile and text string types of signatures (see Annex F, sections 3.3.1 to 3.3.2) – enhanced electronic signature (see Annex F, section 3.3.4)

As to conditions, rules and procedures relating to electronic receipt (Section 710(a)(ii)):

The acknowledgement of receipt of any purported international application filed in electronic form with the Office will contain, in addition to the mandatory information required under Section 704(a)(i) to (iv), the names of the electronic files received (see Section 704(a)(v)).

The Office will make every effort to accept an international application in electronic form. It is only if the application is not sent in accordance with the E-filing interoperability protocol (see Annex F, section 5.1) that no acknowledgement of receipt will be generated. Other errors, such as the use of outdated certificates (see Annex F, Appendix II, section 4.4.7), applications infected by viruses or other forms of malicious logic (see Section 708(b)) or certain missing files, are notified to the applicant by inclusion in the notification of receipt.

Where it appears that the notification of receipt sent to the applicant by electronic means of transmittal was not successfully transmitted, the Office will promptly retransmit the notification of receipt by the same or another means (see Section 709(b)).

As to methods of online payment (Section 710(a)(ii)):

Online payment is not available.

As to details concerning help desks (Section 710(a)(ii)):

The Office has put in place a help desk to answer questions from users of the service. The help desk may be contacted:

– by telephone at: (503) 2593 5718 – by e-mail at: [email protected]

As to the kinds of documents which may be transmitted to the Office in electronic form (Section 710(a)(iii)):

– international applications – subsequently filed documents for international applications, to the extent supported by the relevant software


101

As to the filing of documents in pre-conversion format (Section 710(a)(iv)):

The Office will accept the filing of documents in any pre-conversion format together with the international application.

As to procedures for notification of applicants and procedures which applicants may follow as alternatives when the electronic systems of the Office are not available (Section 710(a)(v)):

In case of failure of the electronic systems when an international application is filed with it, the Office will use all means available, such as fax or e-mail, to inform the applicant about procedures to follow as alternatives.

The Office will provide information concerning the availability of the online filing system on its website (www.cnr.gob.sv).

As to the certification authorities that are accepted by the Office and the electronic addresses of the certificate policies under which certificates are issued (Section 710(a)(vi)):

– WIPO customer CA (www.wipo.int/pct-safe/en/certificates.htm)

As to the procedures relating to access to the files of international applications filed or stored in electronic form (Section 710(a)(vii)):

Applications filed via ePCT-Filing can be accessed by the applicant using ePCT.

[Updating of Annex C(SV) of the PCT Applicant’s Guide]


102



Page

Information on Contracting States: Notifications from Offices Concerning Exceptional Non-Working Days Due to COVID-19 Pandemic IN India 103

International Applications Containing Sequence Listings: Notification by International Searching Authorities of Applicable Technical Requirements CA Canada 104

Fees Payable under the PCT AU Australia 104 RU Russian Federation 105



103


IN India

Further to the notification published in the Official Notices (PCT Gazette) of 2 April 2020 (pages 58 and 59), the Indian Patent Office notified the International Bureau, on 8 May 2020, that it was additionally closed from 15 to 19 April 2020, due to circumstances relating to the COVID-19 pandemic.

Therefore, in accordance with the aforementioned notifications, the Office was not open to the public for the purposes of the transaction of official business from 25 March to 19 April 2020.

Consequently, pursuant to PCT Rule 80.5(i), if the expiration of any period during which any document or fee in connection with an international application was required to reach the Office fell between 25 March to 19 April 2020 (inclusive), that period shall expire on the next subsequent day on which the Office opens to the public for the purposes of the transaction of official business.

As regards the delay or loss in the mail of documents or letters addressed to the Office, or other possible reasons for delay in meeting time limits due to closures relating to the COVID-19 pandemic, refer to PCT Rules 82.1 and 82quater, respectively, and to the Official Notices (PCT Gazette) of 16 April 2020 (page 68).



For further information on measures adopted by the Office in response to the COVID-19 pandemic, refer to the WIPO COVID-19 IP Policy Tracker, available at:

https://www.wipo.int/covid19-policy-tracker/


104

INTERNATIONAL APPLICATIONS CONTAINING SEQUENCE LISTINGS: NOTIFICATION BY INTERNATIONAL SEARCHING AUTHORITIES OF APPLICABLE TECHNICAL REQUIREMENTS

CA Canada

In accordance with Section 513(f) of the Administrative Instructions under the PCT, the Canadian Intellectual Property Office has notified the International Bureau of an additional means of transmittal of the sequence listing in electronic form accepted by it in its capacity as International Searching Authority.

In addition to a text file on a single diskette, CD-ROM, or DVD, sequence listings may now be submitted electronically, in <.txt> format, via the Office’s general correspondence web service, available at:

https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr01970.html



AU Australia

New equivalent amounts in Australian dollars (AUD) have been established for the international filing fee and the fee per sheet in excess of 30 (pursuant to PCT Rule 15.2(d)), for reductions under item 4 of the PCT Schedule of Fees, as well as for the handling fee (pursuant to PCT Rule 57.2(d)). These amounts, applicable from 1 August 2020, are as follows:

International filing fee: AUD 2,150 Fee per sheet in excess of 30 AUD 24 Reductions (under the Schedule of Fees, item 4): Electronic filing (the request being

in character-coded format) AUD 323 Electronic filing (the request,

description, claims and abstract being in character-coded format) AUD 485

Handling fee AUD 323

[Updating of Annexes C(AU) and E(AU) of the PCT Applicant’s Guide]


105


Pursuant to PCT Rule 16.1(d), new equivalent amounts in US dollars (USD) have been established for the search fee for an international search carried out by the Federal Service for Intellectual Property (Rospatent) (Russian Federation). These amounts, applicable from 1 August 2020, are USD 113 for searches carried out in Russian and USD 532 for searches carried out in English.



106

OFFICIAL NOTICES (PCT GAZETTE) 4 June 2020


Page

Fees Payable under the PCT AU Australia 107 BR Brazil 107 KR Republic of Korea 107

Receiving Offices BR Brazil 107

Official Notices (PCT Gazette) – 4 June 2020

107


AU Australia

Pursuant to PCT Rule 16.1(d), new equivalent amounts in Swiss francs (CHF) and Korean won (KRW) have been established for the search fee for an international search carried out by the Australian Patent Office. These amounts, applicable from 1 August 2020, are CHF 1,361 and KRW 1,757,000, respectively.


BR Brazil

The National Institute of Industrial Property (Brazil) has notified the International Bureau that since 2 October 2019, the fee for the priority document on paper, payable to the Office in its capacity as receiving Office, is no longer applicable. The fee for the priority document online remains unchanged.

[Updating of Annex C(BR) of the PCT Applicant’s Guide]


Pursuant to PCT Rule 16.1(d), new equivalent amounts in Australian dollars (AUD) have been established for the search fee for an international search carried out by the Korean Intellectual Property Office. These amounts, applicable from 1 August 2020, are AUD 564 for searches carried out in Korean and AUD 1,503 for searches carried out in English.


RECEIVING OFFICES

BR Brazil

The National Institute of Industrial Property (Brazil) has notified the International Bureau that since 2 October 2019, the priority document may only be requested online.1

Furthermore, the Office notified that since 19 November 2019, the international application and other PCT-related documents filed on paper are received only by mail. For information concerning filing on paper by mail, refer to the Official Resolution of the National Institute of Industrial Property (Brazil) Nº253 of 13 November 2019.2

[Updating of Annex C(BR) of the PCT Applicant’s Guide]

1 Refer to RPI – Revista da Propriedade Industrial No. 2544 (8 October 2019), available at:

http://revistas.inpi.gov.br/pdf/Comunicados2544.pdf 2 Refer to RPI – Revista da Propriedade Industrial No. 2550 (19 November 2019), available at:

http://revistas.inpi.gov.br/pdf/Comunicados2550.pdf


108



Page

International Searching Authorities International Preliminary Examining Authorities BR Brazil 109 SG Singapore 110

Information on Contracting States: Notifications from Offices Concerning Exceptional Non-Working Days Due to COVID-19 Pandemic BZ Belize 111 MX Mexico 111 PH Philippines 111

Fees Payable under the PCT SG Singapore 112

Receiving Offices KR Republic of Korea 112


109


BR Brazil

Agreement between the Brazilian National Institute of Industrial Property and the International Bureau of the World Intellectual Property Organization1 – Amendment to Annex D

On 30 April 2020, the National Institute of Industrial Property (Brazil) notified the International Bureau, in accordance with Article 11(3)(iii) of the above-mentioned Agreement, of amendments to Part I of Annex D thereof. These amendments consist of a change to the reference contained in the footnote of Part I of Annex D, as well as the establishment of a new condition for the filing on paper of PCT-related documents (reflected in a new footnote introduced in Part I of Annex D).

With effect since 19 November 2019, the amended Annex D reads as follows:

Annex D Fees and Charges


Kind of fee or charge2 Amount (Brazilian reals) (online) (on paper)3 Search fee (Rule 16.1(a)) 1,685 2,525 Additional fee (Rule 40.2(a)) 1,360 2,040 Preliminary examination fee (Rule 58.1(b)) 630 945 Additional fee (Rule 68.3(a)) 365 545 Late payment fee for preliminary examination amount as set out in Rule 58bis.2 Protest fee (Rules 40.2(e) and 68.3(e)) 1,220 1,830 Late furnishing fee for sequence listings (Rule 13ter.1(c) and 13ter.2) 180 270 Cost of copies (Rules 44.3(b), 71.2(b), 94ter.1 and 94.2), per page 1.5 2

Part II. [No change]

[Updating of Annexes D(BR) and E(BR) of the PCT Applicant’s Guide]

1 Available on the WIPO website at: www.wipo.int/pct/en/texts/agreements/ag_br.pdf 2 These fees are reduced by 60% under certain conditions (refer to Official Resolution of the National Institute of

Industrial Property (Brazil) No. 251/19 of 2 October 2019). 3 International applications and PCT-related documents filed on paper are received only by mail (refer to Official

Resolution of the National Institute of Industrial Property (Brazil) No. 253/19 of 13 November 2019).


110

SG Singapore

Agreement between the Intellectual Property Office of Singapore and the International Bureau of the World Intellectual Property Organization4 – Amendment to Annex A

The Intellectual Property Office of Singapore has notified the International Bureau, in accordance with Article 11(3)(i) of the above-mentioned Agreement, of an amendment to Annex A(i) thereof. This amendment, which will enter into force on 1 July 2020, consists of the addition of the Republic of Korea to the States indicated in item (i) of the Annex.

As from 1 July 2020, the amended Annex A will read as follows:

Annex A States and Languages

Under Article 3 of the Agreement, the Authority specifies:

(i) the following States for which it will act: so far as Article 3(1) is concerned: Singapore, Brunei Darussalam, Cambodia, Indonesia, Japan, Mexico, Republic of Korea, Thailand, Uganda, United States of America, Viet Nam;

so far as Article 3(2) is concerned: where the Authority has prepared the international search report, Singapore, Brunei Darussalam, Cambodia, Indonesia, Japan, Mexico, Republic of Korea, Thailand, Uganda, United States of America, Viet Nam. Where a receiving Office specifies the International Authority under Articles 3(1) and (2), the International Authority shall become competent for international applications filed at that receiving Office from a date to be agreed by the receiving Office and International Authority and to be notified to the International Bureau.

(ii) [No change]

4 Available on the WIPO website at: www.wipo.int/pct/en/texts/agreements/ag_sg.pdf


111


Further to the notifications published in the Official Notices (PCT Gazette) of 2 April 2020 (page 59), 23 April 2020 (page 74), 30 April 2020 (page 82), 7 May 2020 (page 90), 14 May 2020 (page 96) and 28 May 2020 (page 103), the International Bureau has been notified that due to circumstances relating to the COVID-19 pandemic, a number of additional PCT Offices were closed to the public, or have extended previously notified closures to the public, for the purposes of the transaction of official business, as follows:

Office Code and Name Closed Dates Notified BZ Belize Intellectual Property Office 3 April (midday) to 13 April 2020 MX Mexican Institute of Industrial Property 27 March 2020 until further notice5 PH Intellectual Property Office of the Philippines 15 March to 25 May 2020

Consequently, pursuant to PCT Rule 80.5(i), if the expiration of any period during which any document or fee in connection with an international application is (was) required to reach an Office falls (fell) on a day on which such Office is (was) not open to the public for the aforementioned purposes, that period shall expire on the next subsequent day on which the Office opens to the public for the purposes of the transaction of official business.

As regards the delay or loss in the mail of documents or letters addressed to an Office or other possible reasons for delay in meeting time limits due to closures relating to the COVID-19 pandemic, refer to PCT Rules 82.1 and 82quater, respectively, and to the Official Notices (PCT Gazette) of 16 April 2020 (page 68).

Additional information concerning closed dates, as furnished to the International Bureau by Offices, is available at:


For further information on measures adopted by Offices in response to the COVID-19 pandemic, refer to the WIPO COVID-19 IP Policy Tracker, available at:


5 Extended from 30 May 2020 (refer to Official Notices (PCT Gazette) of 30 April 2020, page 82).


112


SG Singapore

Pursuant to PCT Rule 16.1(d), an equivalent amount in Korean won (KRW) has been established for the search fee for an international search carried out by the Intellectual Property Office of Singapore. This amount, applicable from 1 July 2020, is KRW 1,955,000.

[Updating of Annex D(SG) of the PCT Applicant’s Guide]

RECEIVING OFFICES


The Korean Intellectual Property Office has specified the Intellectual Property Office of Singapore – in addition to the Australian Patent Office, the Austrian Patent Office, the Japan Patent Office (JPO), and the Korean Intellectual Property Office – as competent International Searching and Preliminary Examining Authority for international applications filed with the Korean Intellectual Property Office by nationals and residents of the Republic of Korea, with effect from 1 July 2020.

[Updating of Annex C(KR) of the PCT Applicant’s Guide]


113



Page

Information on Contracting States: Notifications from Offices Concerning Exceptional Non-Working Days Due to COVID-19 Pandemic PA Panama 114

Information on Contracting States GT Guatemala 114

Fees Payable under the PCT BR Brazil 115 RU Russian Federation 115



114


PA Panama

Further to the notification published in the Official Notices (PCT Gazette) of 2 April 2020 (page 59) concerning the closure of the Directorate General of the Industrial Property Registry (DIGERPI) (Panama) due to circumstances relating to the COVID-19 pandemic, the Office has notified the International Bureau that it reopened to the public on 8 June 2020 for the purposes of the transaction of official business.

Consequently, as published in the aforementioned notification and in accordance with PCT Rule 80.5(i), if the expiration of any period during which any document or fee in connection with an international application was required to reach the Office fell between 17 March and 7 June 2020 (inclusive), that period shall expire on the next subsequent day on which the Office opens to the public for the purposes of the transaction of official business.

As regards the delay or loss in the mail of documents or letters addressed to the Office, or other possible reasons for delay in meeting time limits due to closures relating to the COVID-19 pandemic, refer to PCT Rules 82.1 and 82quater, respectively, and to the Official Notices (PCT Gazette) of 16 April 2020 (page 68).

Additional information concerning the Office’s closed dates, as furnished to the International Bureau by the Office, is available at:


For further information on measures adopted by the Office in response to the COVID-19 pandemic, refer to the WIPO COVID-19 IP Policy Tracker, available at:



GT Guatemala

The Registry of Intellectual Property (Guatemala) has notified the International Bureau of changes in its location and mailing address, and its facsimile numbers, which are now as follows:

Location and mailing address: 7a. Avenida 7-61 zona 4 Segundo Nivel Guatemala Ciudad, CP 01004 Guatemala

Facsimile machine: (502) 232 470 51 (502) 232 470 52

[Updating of Annex B1(GT) of the PCT Applicant’s Guide]


115


BR Brazil

Pursuant to PCT Rule 16.1(d), new equivalent amounts in Swiss francs (CHF) and euros (EUR) have been established for the search fee for an international search carried out by the National Institute of Industrial Property (Brazil). These amounts, applicable from 1 August 2020, are CHF 286 and EUR 271, respectively, when filing online; and CHF 429 and EUR 406, respectively, when filing on paper.



Pursuant to PCT Rule 16.1(d), new equivalent amounts in Swiss francs (CHF) have been established for the search fee for an international search carried out by the Federal Service for Intellectual Property (Rospatent) (Russian Federation). These amounts, applicable from 1 August 2020, are CHF 118 for searches carried out in Russian, and CHF 554 for searches carried out in English.


Furthermore, pursuant to PCT Rule 45bis.3(b), new equivalent amounts in Swiss francs (CHF) have been established for the supplementary search fee for a supplementary international search carried out by the Office. These amounts, also applicable from 1 August 2020, are CHF 163 and CHF 261 (the latter amount applies where a declaration referred to in PCT Article 17(2)(a) has been made by the International Searching Authority because of subject matter referred to in PCT Rule 39.1(iv) (methods of treatment)).

[Updating of Annex SISA(RU) of the PCT Applicant’s Guide]


116



Page

Modifications of the Administrative Instructions under the PCT Note Prepared by the International Bureau 117 Text of the Modifications of the Administrative Instructions (as in force from 1 July 2020) 118

International Searching Authorities International Preliminary Examining Authorities JP Japan 136 KR Republic of Korea 137

Receiving Offices LA/IB Lao People’s Democratic Republic / International Bureau of WIPO 138

Excuse of Delay under PCT Rule 82quater.2: Notifications by Offices and Authorities under Section 111(c) of the Administrative Instructions under the PCT SE Sweden 139



117

MODIFICATIONS OF THE ADMINISTRATIVE INSTRUCTIONS UNDER THE PCT

NOTE PREPARED BY THE INTERNATIONAL BUREAU

Following consultation with Offices, Authorities, and certain non-governmental organizations representing users of the PCT system, pursuant to PCT Rule 89.2(b), modifications to Sections 111, 308bis, 309, 310, 310bis, 310ter, 311, 410, 413, and Annexes C, D and E of the Administrative Instructions under the PCT, as well as new Sections 114, 317bis, 419bis, 420bis, 602bis and new Annex G, were promulgated with effect from 1 July 2020.

The main purposes of these modifications are:

(i) to increase transparency and legal certainty of the procedure for the excuse of delay in the case of unavailability of electronic means of communication under new PCT Rule 82quater.21 (Section 111 and Annex E);

(ii) to establish details of the procedures to be followed by Offices collecting fees for the benefit of other Offices, or receiving fees collected by other Offices, and to create a consistent legal basis for the operation of the WIPO Fee Transfer Service (formerly the “netting pilot”) with the long term aim of exchanging high-quality and timely fee information in a consistent format (Section 114 and Annex G);

(iii) to provide guidance in order to align the practices of receiving Offices and designated (or elected) Offices in the special case where an applicant has erroneously filed an incorrect element or part of the international application (Sections 308bis, 309, 310, 310bis, 310ter, 311, 410 and 413, and Annexes C and D);

(iv) to provide a legal basis for treating the date of receipt of a notice under PCT Rule 26quater.1 at the receiving Office as the date of receipt at the International Bureau, and a legal basis for the correction or addition of the indications provided for in Rule 4.11 within a period that would ensure their inclusion in the international publication (Sections 317bis and 419bis); and

(v) to provide a legal basis for requiring an International Preliminary Examining Authority (IPEA) to copy certain documents from the file of the international preliminary examination to the International Bureau while allowing some flexibility in the time for effecting such transmittal, and a legal basis for permitting the International Bureau to communicate the documents received from an IPEA to elected Offices (Sections 420bis and 602bis).

The full text of the Administrative Instructions as in force from 1 July 2020 (PCT/AI/21) is available on the WIPO website at:

www.wipo.int/pct/en/texts/

1 Available on the WIPO website at: https://www.wipo.int//pct/en/texts/


118

TEXT OF MODIFICATIONS OF THE ADMINISTRATIVE INSTRUCTIONS (as in force from 1 July 2020)

PART 1 INSTRUCTIONS RELATING TO GENERAL MATTERS

Section 111 Procedure and Considerations in the Case of Excuse of the Delay in Meeting

Certain Time Limits under Rule 82quater (a) Where the receiving Office, the International Searching Authority, the Authority specified for supplementary search, the International Preliminary Examining Authority, or the International Bureau receives a request under Rule 82quater for the excuse of a delay in meeting a time limit, it shall promptly: (i) communicate its decision whether or not to excuse such a delay to the interested party; and (ii) where applicable, transmit a copy of such a request, a copy of any evidence furnished and of its decision to the International Bureau. (b) An interested party desiring to have delays excused due to general unavailability of electronic communications services under Rule 82quater.1 must establish that the outage of electronic communications services affected a widespread geographical area rather than being a localized problem, that it was unexpected or unforeseen, and that there was no alternative communication means available to him. (c) Where any Office that acts as the receiving Office, the International Searching Authority, the Authority specified for supplementary search, or the International Preliminary Examining Authority provides for the excuse of a delay in meeting time limits due to the unavailability of electronic means of communication at that Office under Rule 82quater.2, it shall notify the International Bureau accordingly. The International Bureau shall promptly publish this information in the Gazette. (d) Where the International Bureau provides for the excuse of a delay in meeting time limits due to the unavailability of electronic means of communication at the Bureau under Rule 82quater.2, it shall publish this information in the Gazette. (e) The International Bureau shall also promptly publish in the Gazette any notification received by it under Rule 82quater.2(a), last sentence.

Section 114 Notification and Transfer of Fees

The notification of the receipt of fees under Rule 96.2(b) and the transfer of fees under Rule 96.2(c) shall be carried out in accordance with Annex G.


119

PART 3 INSTRUCTIONS RELATING TO THE RECEIVING OFFICE

Section 308bis Marking of Later Submitted Sheets

The receiving Office shall indelibly mark any sheet containing an element referred to in Article 11(1)(iii)(d) or (e), or a part referred to in Rule 20.5(a) or an element or part referred to in Rule 20.5bis(a), received on a date later than the date on which sheets were first received (“later submitted sheet”), in the upper right-hand corner of each sheet, with the international application number referred to in Section 307 and the date of actual receipt of that sheet.

Section 309 Procedure in the Case of Later Submitted Sheets

Furnished for the Purposes of Incorporation by Reference (a) This Section applies, subject to paragraph (f), to later submitted sheets which accompany a notice confirming under Rule 20.6 that an element or part embodied in those sheets was incorporated by reference. (b) Where later submitted sheets as referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and the receiving Office makes a finding under Rule 20.6(b), the receiving Office shall: (i) indelibly mark, in the middle of the bottom margin of each later submitted sheet, the words “INCORPORATED BY REFERENCE (RULE 20.6)”, or their equivalent in the language of publication of the international application; (ii) notify the applicant that the element or part contained in the later submitted sheets is considered to have been contained in the international application or purported international application on the date when sheets were first received and that that date has been accorded or retained, as the case may be, as the international filing date; (iii) keep in its files a copy of the later submitted sheets marked under item (i) and of the notice under Rule 20.6(a); (iv) where the later submitted sheets are furnished under Rule 20.5bis to correct any sheets that have been erroneously filed (“erroneously filed sheets”), indelibly mark, in the middle of the bottom margin of each erroneously filed sheet, the words “ERRONEOUSLY FILED (RULE 20.5bis)”, or their equivalent in the language of publication of the international application, and move the erroneously filed sheets to the end of the corresponding element of the purported international application; (v) where transmittals under Article 12(1) have already been made, notify the International Bureau and the International Searching Authority accordingly, and transmit the later submitted sheets marked under item (i) and the notice under Rule 20.6(a) to the said Bureau and a copy thereof to the said Authority; and (vi) where transmittals under Article 12(1) have not yet been made, attach the later submitted sheets marked under item (i) and the notice under Rule 20.6(a) to the record copy and a copy thereof to the search copy.


120

(c) Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and the receiving Office makes a finding under Rule 20.6(c), the receiving Office shall, subject to Section 310bis: (i) effect the required correction of the international filing date or accord as the international filing date the date of receipt of the later submitted sheets; (ii) notify the applicant that the content of the later submitted sheets is not considered to have been contained in the international application or purported international application on the date when sheets were first received and that the international filing date has been accorded as, or corrected to, as the case may be, the date on which the new sheets were received; (iii) keep in its files a copy of the later submitted sheets and of the notice under Rule 20.6(a); (iv) where the later submitted sheets are furnished under Rule 20.5bis to correct any erroneously filed sheets, remove the erroneously filed sheets from the international application and notify the applicant accordingly, and keep a copy of the removed sheets in the file; (v) where transmittals under Article 12(1) have already been made, notify the International Bureau and the International Searching Authority accordingly and transmit a copy of the corrected first and last sheets of the request, the later submitted sheets and the notice under Rule 20.6(a) to the said Bureau and a copy thereof to the said Authority; and (vi) where transmittals under Article 12(1) have not yet been made, attach the later submitted sheets and the notice under Rule 20.6(a) to the record copy and a copy thereof to the search copy. (d) Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 but the purported international application still does not fulfill the requirements of Article 11(1), the receiving Office shall proceed as provided in Rule 20.4, but not before the expiration of the time limit under Rule 20.7. (e) Where later submitted sheets referred to in paragraph (a) are received after the expiration of the applicable time limit referred to in Rule 20.7, the receiving Office shall proceed as provided in Section 310ter. (f) Where later submitted sheets referred to in paragraph (a) are received but a missing element or part contained in those sheets cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of Rule 20.8(a), the receiving Office shall: (i) inform the applicant that the notice under Rule 20.6(a) confirming the incorporation by reference of the missing element or part has been disregarded; (ii) proceed in accordance with Section 310(b), which shall apply mutatis mutandis, as if the notice under Rule 20.6(a) were a correction furnished under Rule 20.3(b)(i), or a missing part furnished under Rule 20.5(b) or (c), as the case may be; and (iii) proceed in accordance with Section 310bis(b) where the applicant requests, within the time limit under Rule 20.5(e), that the missing part concerned be disregarded.


121

(g) Where later submitted sheets referred to in paragraph (a) are furnished under Rule 20.5bis to correct any erroneously filed element or part but the correct element or part embodied in those sheets cannot be incorporated by reference in the international application under Rules 4.18 and 20.6 because of the operation of Rule 20.8(a-bis), the receiving Office shall: (i) subject to subparagraph (ii), transmit the international application to the International Bureau as receiving Office; (ii) if the applicant does not authorize the transmittal of the international application under Rule 19.4(a)(iii) or does not pay the required fee within the applicable time limit, proceed in accordance with Section 333(c) and apply the procedure provided in paragraph (f) mutatis mutandis as if the notice under Rule 20.6(a) were a correction furnished under Rule 20.5bis(b) or (c), as the case may be.

Section 310 Procedure in the Case of Later Submitted Sheets

Not Furnished for the Purposes of Incorporation by Reference (a) This Section applies to later submitted sheets which do not accompany a notice confirming under Rule 20.6 that an element or part embodied in those sheets was incorporated by reference. (b) Where later submitted sheets as referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 and where the international filing date is to be accorded under Rule 20.3(b)(i), 20.5(b) or 20.5bis(b), or corrected under Rule 20.5(c) or 20.5bis(c), the receiving Office shall, subject to Section 310bis: (i) accord the international filing date in accordance with Rule 20.3(b)(i), 20.5(b) or 20.5bis(b), or effect the required correction of the international filing date in accordance with Rule 20.5(c) or 20.5bis(c), as the case may be; (ii) notify the applicant of the correction or the according of the international filing date effected under item (i); (iii) keep in its files a copy of the later submitted sheets; (iv) where the later submitted sheets are furnished under Rule 20.5bis to replace any erroneously filed sheets, remove the erroneously filed sheets from the international application and notify the applicant accordingly, and keep a copy of the removed sheets in the file; (v) where transmittals under Article 12(1) have already been made, notify the International Bureau and the International Searching Authority accordingly and transmit a copy of the corrected first and last sheets of the request and the later submitted sheets to the said Bureau and a copy thereof to the said Authority; and (vi) where transmittals under Article 12(1) have not yet been made, attach the later submitted sheets to the record copy and a copy thereof to the search copy. (c) Where later submitted sheets referred to in paragraph (a) are received within the applicable time limit referred to in Rule 20.7 but the purported international application still does not fulfill the requirements of Article 11(1), the receiving Office shall proceed as provided in Rule 20.4. (d) Where later submitted sheets referred to in paragraph (a) are received after the expiration of the applicable time limit referred to in Rule 20.7, the receiving Office shall proceed as provided in Section 310ter.


122

Section 310bis Procedure in the Case of Later Submitted Sheets

Resulting in the Correction of the International Filing Date under Rule 20.5(c) or 20.5bis(c)

(a) Where, following the receipt of later submitted sheets referred to in Sections 309(a) or 310(a) within the applicable time limit referred to in Rule 20.7, the international filing date has been corrected under Rule 20.5(c) or 20.5bis(c), the receiving Office shall, in addition to proceeding under Section 309(c)(i) to (iii), or 310(b)(i) to (iii), as the case may be: (i) draw the attention of the applicant to the procedure available under Rule 20.5(e) or 20.5bis(e), as the case may be; (ii) proceed under Section 309(c)(iv) to (vi), or 310(b)(iv) to (vi), as the case may be, but only after the expiration of the time limit under Rule 20.5(e) or 20.5bis(e) and only where the applicant has not made a request under that Rule. (b) Where the applicant requests within the time limit under Rule 20.5(e) or 20.5bis(e) that the missing part or the correct element or part concerned be disregarded, the receiving Office shall: (i) restore the international filing date to that which had applied prior to its correction under Rule 20.5(c) or 20.5bis(c); (ii) indelibly mark, in the middle of the bottom margin of each sheet containing the missing part concerned, the words “NOT TO BE CONSIDERED (RULE 20.5(e))”, or in the middle of the bottom margin of each sheet embodying the correct element or part concerned, the words “NOT TO BE CONSIDERED (RULE 20.5bis(e))”, as the case may be, or their equivalent in the language of publication of the international application; (iii) notify the applicant that the missing part or the correct element or part is considered not to have been furnished and that the international filing date has been restored to that which had applied prior to its correction under Rule 20.5(c) or 20.5bis(c); (iv) keep in its files a copy of the later submitted sheets marked under item (ii) and of the request made under Rule 20.5(e) or 20.5bis(e); (v) where transmittals under Article 12(1) have already been made, notify the International Bureau and the International Searching Authority accordingly, and transmit the later submitted sheets marked under item (ii), the notice under Rule 20.6(a) and the request made under Rule 20.5(e) or 20.5bis(e) to the said Bureau and a copy thereof to the said Authority; (vi) where transmittals under Article 12(1) have not yet been made, notify the International Bureau accordingly and attach the later submitted sheets marked under item (ii), the notice under Rule 20.6(a) and the request under Rule 20.5(e) or 20.5bis(e) to the record copy.


123

Section 310ter Procedure in the Case of Later Submitted Sheets

Furnished after the Expiration of the Applicable Time Limit Referred to in Rule 20.7

Where later submitted sheets referred to in Sections 309(a) or 310(a) are received after the expiration of the applicable time limit referred to in Rule 20.7, the receiving Office shall: (i) notify the applicant of the fact and of the date of receipt of the later submitted sheets, and of the fact that they will not be considered for the PCT procedure; (ii) indelibly mark, in the middle of the bottom margin of each sheet containing the missing or correct element or part concerned, the words “NOT TO BE CONSIDERED (RULE 20.7)”, or their equivalent in the language of publication of the international application; (iii) keep in its files a copy of the later submitted sheets marked under item (ii) and, where applicable, of the notice under Rule 20.6(a); (iv) where transmittals under Article 12(1) have already been made, notify the International Bureau accordingly, and transmit the later submitted sheets marked under item (ii) and, where applicable, the notice under Rule 20.6(a) to the said Bureau; (v) where transmittals under Article 12(1) have not yet been made, notify the International Bureau accordingly, and attach the later submitted sheets marked under item (ii) and, where applicable, the notice under Rule 20.6(a) to the record copy.

Section 311 Renumbering in the Case of Deletion, Substitution or Addition

of Sheets of the International Application and of the Translation Thereof (a) The receiving Office shall, subject to Section 207, sequentially renumber the sheets of the international application when necessitated by the addition of any new sheet, the deletion of entire sheets, a change in the order of the sheets or any other reason. (b) The sheets of the international application shall be provisionally renumbered in the following manner: (i) subject to paragraph (iii), when a sheet is deleted, the receiving Office shall either include a blank sheet with the same number and with the word “DELETED,” or its equivalent in the language of publication of the international application, below the number, or insert, in brackets, below the number of the following sheet, the number of the deleted sheet with the word “DELETED” or its equivalent in the language of publication of the international application; (ii) when one or more sheets are added, each sheet shall be identified by the number of the preceding sheet followed by a slant and then by another Arabic numeral such that the additional sheets are numbered consecutively, starting always with number one for the first sheet added after an unchanged sheet (e.g., 10/1, 15/1, 15/2, 15/3, etc.); when later additions of sheets to an existing series of added sheets are necessary, an extra numeral shall be used for identifying the further additions (e.g., 15/1, 15/1/1, 15/1/2, 15/2, etc.).


124

(iii) where a correct element or part furnished under Rule 20.5bis to correct an erroneously filed element or part is added to the international application, the sheets of the correct element or part shall be numbered without taking into account the sheets of the erroneously filed element or part, and no action referred to in paragraph (i) need be taken with respect to the sheets of the erroneously filed element or part, either when they are removed from the international application under Section 309(c)(iv) or 310(b)(iv), or when they are moved to the end of the corresponding element of the international application under Section 309(b)(iv). (c) In the cases mentioned in paragraph (b), it is recommended that the receiving Office should write, below the number of the last sheet, the total number of the sheets of the international application followed by the words “TOTAL OF SHEETS” or their equivalent in the language of publication of the international application. It is further recommended that, at the bottom of any last sheet added, the words “LAST ADDED SHEET” or their equivalent in the language of publication of the international application should be inserted. (d) Paragraphs (a) to (c) shall apply mutatis mutandis to any translation of the international application furnished under Rule 12.3 or 12.4.

Section 317bis Transmittal of a Notice of Correction or Addition

of an indication under Rule 26quater.1 If a notice under Rule 26quater.1 is submitted by the applicant to the receiving Office, that Office shall mark the date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been received by the International Bureau on the date marked.

PART 4 INSTRUCTIONS RELATING TO THE INTERNATIONAL BUREAU

Section 410 Numbering of Sheets for the Purposes of International Publication;

Procedure in Case of Missing or Erroneously Filed Sheets (a) In the course of preparing the international application for international publication, the International Bureau shall sequentially renumber the sheets to be published only when necessitated by the addition of any new sheet, the deletion of entire sheets or a change in the order of the sheets. Otherwise, the numbering provided under Section 207 shall be maintained. (b) Where a sheet has not been filed or is not to be taken into consideration for the purposes of international processing under Section 310bis or 310ter, the International Bureau shall include an indication to that effect in the published international application. (c) Where the receiving Office fails to correct the numbering of the sheets in accordance with Section 311(b)(iii), the International Bureau shall number the sheets accordingly.


125

Section 413 Incorporations by Reference under Rule 20.6, Corrections of Defects under

Rule 26.4 and Rectifications of Obvious Mistakes under Rule 91 (a) Where the International Bureau receives from the receiving Office a letter containing a correction of any defects under Rule 26.4, or a replacement sheet and the letter accompanying it, the International Bureau shall transfer the correction to the record copy, together with the indication of the date on which the receiving Office received the letter, or shall insert the replacement sheet in the record copy. Any letter and any replaced sheet shall be kept in the file of the international application. (b) Paragraph (a) shall apply mutatis mutandis to rectifications of obvious mistakes under Rule 91 authorized by the receiving Office, by the International Searching Authority or, where a demand has been made, by the International Preliminary Examining Authority. (b-bis) Where the International Bureau receives from the receiving Office, under Sections 309(c)(v), 310(b)(v), or 310bis(b)(v), corrected sheets of the request or later submitted sheets, the International Bureau shall transfer any correction to the record copy and insert any later submitted sheets in the record copy. (c) Where the International Bureau is notified by the International Searching Authority under Rule 43.6bis(b) that the rectification of an obvious mistake authorized under Rule 91 has not been taken into account for the purposes of the international search, the International Bureau shall notify the designated Offices and, where a demand has been made, the International Preliminary Examining Authority accordingly. (d) Where the International Bureau is notified by the International Preliminary Examining Authority under Rule 70.2(e) that the rectification of an obvious mistake authorized under Rule 91 has not been taken into account for the purposes of the international preliminary examination, the International Bureau shall notify the elected Offices accordingly.

Section 419bis Processing of Corrections or Additions under Rule 26quater

(a) Where any indication referred to in Rule 4.11, or any correction thereof under Rule 26quater.1, is submitted to the International Bureau within the time limit under Rule 26quater.1, the International Bureau shall enter the correction or addition in the request, draw a line through, while still leaving legible, any indication deleted as a result of the correction, and enter, in the margin, the letters “IB”. (b) The International Bureau shall promptly notify the applicant of any indication corrected or added under Rule 26quater.1. (c) Where any indication referred to in Rule 4.11, or any correction thereof under Rule 26quater.1, is submitted to the International Bureau after the expiration of the time limit under Rule 26quater.1, the International Bureau shall notify the applicant accordingly and inform the applicant that such an indication or correction should be submitted directly to the designated Office or Offices concerned.


126

Section 420bis Communication of Other Documents to Elected Offices

The International Bureau shall communicate the documents received from the International Preliminary Examining Authority under Rule 71.1(b) to each elected Office, at the same time as it effects the communication provided for in Article 36(3)(a) in accordance with Rule 73.2.

PART 6 INSTRUCTIONS RELATING TO THE

INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY

Section 602bis Transmittal of Other Documents to the International Bureau under Rule 71.1(b)

(a) The International Preliminary Examining Authority shall transmit a copy of the following documents to the International Bureau under Rule 71.1(b): (i) any written opinion issued by the International Preliminary Examining Authority; (ii) any replacement sheet containing amendments under Article 34 and any letter accompanying the amendments, including any such amendments and letters that have been superseded; (iii) any letter containing arguments that the applicant submitted to the International Preliminary Examining Authority under Rule 66.3; (iv) any invitation to restrict the claims or pay additional fees issued by the International Preliminary Examining Authority; and (v) any protest against the invitation to restrict the claims or pay additional fees and the decision thereon, regardless of whether or not the applicant has so requested in accordance with Rule 68.3(c). The International Preliminary Examining Authority may transmit to the International Bureau a copy of any other document in its file. (b) The International Preliminary Examining Authority may transmit the documents referred to in paragraph (a) to the International Bureau at any time after they have become available, but generally not later than at the time of transmitting a copy of the international preliminary examination report to that Bureau. (c) Any International Preliminary Examining Authority may decide to postpone the application of paragraphs (a) and (b) until such time as it is technically prepared to do so.


127

ANNEX C STANDARD FOR THE PRESENTATION

OF NUCLEOTIDE AND AMINO ACID SEQUENCE LISTINGS IN INTERNATIONAL PATENT APPLICATIONS UNDER THE PCT

INTRODUCTION 1. This Standard has been elaborated so as to provide standardization of the presentation of nucleotide and amino acid sequence listings in international patent applications. The Standard is intended to allow the applicant to draw up a single sequence listing which is acceptable to all receiving Offices, International Searching and Preliminary Examining Authorities for the purposes of the international phase, and to all designated and elected Offices for the purposes of the national phase. It is intended to enhance the accuracy and quality of presentations of nucleotide and amino acid sequences given in international applications, to make for easier presentation and dissemination of sequences for the benefit of applicants, the public and examiners, to facilitate searching of sequence data and to allow the exchange of sequence data in electronic form and the introduction of sequence data onto computerized databases.

DEFINITIONS 2. For the purposes of this Standard: (i) the expression “sequence listing” means a nucleotide and/or amino acid sequence listing which gives a detailed disclosure of the nucleotide and/or amino acid sequences and other available information; (i-bis) the expression “sequence listing forming part of the international application” means a sequence listing contained in the international application as filed (as referred to in paragraph 3), including any sequence listing or part thereof which is included in the international application under Rule 20.5(b) or (c), or 20.5bis(b) or (c), which is considered to have been contained in the international application under Rule 20.6(b), or which has been corrected under Rule 26, rectified under Rule 91 or amended under Article 34(2); or a sequence listing included in the international application by way of an amendment under Article 34(2)(b) of the description in relation to sequences contained in the international application as filed (as referred to in paragraphs 3bis and 3ter); (i-ter) the expression “sequence listing not forming part of the international application” means a sequence listing which does not form part of the international application but is furnished for the purposes of the international search or international preliminary examination (as referred to in paragraphs 4 and 4bis); (ii) sequences which are included are any unbranched sequences of four or more amino acids or unbranched sequences of ten or more nucleotides. Branched sequences, sequences with fewer than four specifically defined nucleotides or amino acids as well as sequences comprising nucleotides or amino acids other than those listed in Appendix 2, Tables 1, 2, 3 and 4, are specifically excluded from this definition;


128

(iii) “nucleotides” embrace only those nucleotides that can be represented using the symbols set forth in Appendix 2, Table 1. Modifications, for example, methylated bases, may be described as set forth in Appendix 2, Table 2, but shall not be shown explicitly in the nucleotide sequence; (iv) “amino acids” are those L-amino acids commonly found in naturally occurring proteins and are listed in Appendix 2, Table 3. Those amino acid sequences containing at least one D-amino acid are not intended to be embraced by this definition. Any amino acid sequence that contains post-translationally modified amino acids may be described as the amino acid sequence that is initially translated using the symbols shown in Appendix 2, Table 3, with the modified positions, for example, hydroxylations or glycosylations, being described as set forth in Appendix 2, Table 4, but these modifications shall not be shown explicitly in the amino acid sequence. Any peptide or protein that can be expressed as a sequence using the symbols in Appendix 2, Table 3, in conjunction with a description elsewhere to describe, for example, abnormal linkages, cross-links (for example, disulfide bridge) and end caps, non-peptidyl bonds, etc., is embraced by this definition; (v) “sequence identifier” is a unique integer that corresponds to the SEQ ID NO assigned to each sequence in the listing; (vi) “numeric identifier” is a three-digit number which represents a specific data element; (vii) “language-neutral vocabulary” is a controlled vocabulary used in the sequence listing that represents scientific terms as prescribed by sequence database providers (including scientific names, qualifiers and their controlled-vocabulary values, the symbols appearing in Appendix 2, Tables 1, 2, 3 and 4, and the feature keys appearing in Appendix 2, Tables 5 and 6); (viii) “competent Authority” is the International Searching Authority that is to carry out the international search and to establish the written opinion of the International Searching Authority on the international application, or the International Preliminary Examining Authority that is to carry out the international preliminary examination on the international application. 3. to 42. [No change]

Appendices 1, 2 and 3 [No change]


129

ANNEX D INFORMATION FROM FRONT PAGE OF PUBLISHED INTERNATIONAL

APPLICATION TO BE INCLUDED IN THE GAZETTE UNDER RULE 86.1(i)

The following information shall be extracted from the front page of the publication of the international publication for each published international application and shall, in accordance with Rule 86.1(i), appear in the corresponding entry of the Gazette: 1. as to the international publication: 1.1 the international publication number 1.2 the date of the international publication 1.3 an indication whether the following items were published in the published

international application: 1.31 international search report 1.32 declaration under Article 17(2) 1.33 claims amended under Article 19(1) 1.34 statement under Article 19(1) 1.35 information concerning the removal of an erroneously filed element or part

under Rule 20.5bis(b) or (c) 1.36 request for rectification under the first sentence of Rule 91.3(d) 1.37 information concerning the incorporation by reference of a missing

element or part or a correct element or part as referred to in Rule 48.2(b)(v)

1.38 information concerning a priority claim under Rule 26bis.2(d) 1.39 information concerning a request under Rule 26bis.3 for restoration of the

right of priority 1.4 the language in which the international application was filed 1.5 the language of publication of the international application 2. to 8. [No change]


130

ANNEX E INFORMATION TO BE PUBLISHED IN THE GAZETTE

UNDER RULE 86.1(v)

1. The time limits applicable under Articles 22 and 39 in respect of each Contracting State.

2. The list of the non-patent literature agreed upon by the International Searching Authorities for inclusion in the minimum documentation.

3. The names of the national Offices which do not wish to receive copies under Article 13(2)(c).

4. The provisions of the national laws of Contracting States concerning international-type search.

5. The text of the agreements entered into between the International Bureau and the International Searching Authorities or the International Preliminary Examining Authorities.

6. The names of the national Offices which entirely or in part waived their rights to any communication under Article 20.

7. The names of the Contracting States which are bound by Chapter II of the PCT. 8. Index of concordance of international application numbers and international

publication numbers, listed according to international application numbers. 9. Index of applicants’ names giving, for each name, the corresponding international

publication number(s). 10. Index of international publication numbers, grouped according to the International

Patent Classification symbols. 11. Indication of any subject matter that will not be searched or examined by the various

International Searching and Preliminary Examining Authorities under Rules 39 and 67.

12. Requirements of designated and elected Offices under Rules 49.5 and 76.5 in relation to the furnishing of translations.

13. The dates defining the period referred to in Rule 32.1(b) during which the international application, whose effects may be extended to a successor State under Rule 32.1, must have been filed.

14. The criteria for restoration of the right of priority applied by receiving Offices under Rule 26bis.3 or designated Offices under Rule 49ter.2, and any subsequent changes in that respect.

15. Information about the receiving Offices, the International Bureau and the International Searching and Preliminary Examining Authorities which provide for the excuse of delays in meeting time limits under Rule 82quater.2.


131

ANNEX G NOTIFICATION OF RECEIPT AND TRANSFER OF FEES

I. INTRODUCTION 1. Pursuant to Rules 96.2(b) and 96.2(c) and Section 114 of the PCT Administrative Instructions, the notification of receipt of fees and the transfer of fees collected by one Office for the benefit of another Office shall be carried out in accordance with the provisions set out in this Annex. 2. For the purposes of this Annex, the term “Office” has the same definition as in Rule 96.2(a).

II. AGREEMENTS AND TIMETABLES II.1 AGREEMENT TO PARTICIPATE IN THE WIPO FEE TRANSFER SERVICE 3. An Office (“participating Office”) may agree with the International Bureau to participate in the WIPO process for exchanging fees via the International Bureau (“WIPO Fee Transfer Service”) for PCT purposes by: (a) transferring some or all fees collected by it for the benefit of another participating Office to that other participating Office via the International Bureau in accordance with the provisions set out in this Annex; and (b) having some or all fees collected by another participating Office for its benefit transferred to it via the International Bureau in accordance with the provisions set out in this Annex. 4. Where a collecting Office and the corresponding beneficiary Office have agreed to participate in the WIPO Fee Transfer Service, the transfer of (a) international filing fees under Rule 15.2(c) or (d) collected by the Office in its capacity as a receiving Office for the benefit of the International Bureau; (b) search fees under Rule 16.1(c) or (d) collected by the Office in its capacity as a receiving Office for the benefit of a participating Office in its capacity as an International Searching Authority; (c) supplementary search fees under Rule 45bis.3(b) collected by the International Bureau for the benefit of a participating Office in its capacity as an Authority specified for supplementary search; (d) handling fees under Rule 57.2(c) or (d) collected by an International Preliminary Examining Authority for the benefit of the International Bureau; and (e) differences under Rule 16.1(e) relating to search fees received by the Office in its capacity as an International Searching Authority in a currency other than its fixed currency; from the collecting office to the International Bureau for further transfer to the beneficiary Office shall be considered to be the transfer of said fee in accordance with Rule 15.2(c) or (d), Rule 16.1(c) or (d), Rule 45bis.3(b), Rule 57.2(c) or (d), or Rule 16.1(e), as applicable and shall not be considered a payment by the collecting office to a third party. The transfer shall be carried out promptly in accordance with a timetable for such transfers agreed between the Offices concerned and/or the International Bureau. The Office carrying out the transfer (including, where applicable, the International Bureau) shall bear all bank charges for the transfer of the fees.


132

5. A participating Office, in its capacity as an International Searching Authority, may agree with the International Bureau that some or all of the transfers of fees by it under paragraph 3(a) and the transfer of fees to it under paragraph 3(b) shall be subject to netting in accordance with the provisions set out in this Annex (“fee transfer subject to netting”). 6. The agreement shall specify the formats referred to in paragraphs 10 and 14, below, in which notifications of fee payments and lists of fees to be transferred shall be exchanged. 7. The International Bureau shall publish a list of the PCT fee transfers that are part of the WIPO Fee Transfer Service for each participating Office in the PCT Gazette. II.2 COMMON TIMETABLE FOR FEE LISTS AND FEE TRANSFERS 8. The International Bureau shall, following consultation with participating Offices and taking into account dates when Offices are closed or bank transfers may not be possible, annually establish a timetable (“the common timetable”) specifying the latest dates each month by which lists should be established under paragraphs 13 and 14, below, and transfer of fees made to and from the International Bureau under paragraphs 19 to 23, below. The timetable and any subsequently required modifications shall be transmitted to each participating Office and published in the PCT Gazette.

III. NOTIFICATION AND TRANSFER OF FEES VIA THE INTERNATIONAL BUREAU III.1 NOTIFICATION OF THE RECEIPT OF FEES Notification to the International Bureau by a Collecting Office 9. In accordance with Rule 96.2(b), a collecting Office shall promptly notify the International Bureau of each fee received in full by the Office for the benefit of the International Bureau or to be transferred to a beneficiary Office via the International Bureau. It shall preferably also promptly notify the International Bureau of other fees received, whether for the benefit of itself or of other beneficiary Offices in their role as receiving Office, International Searching Authority, Authority specified for supplementary search or International Preliminary Examining Authority. 10. A notification of a fee received by a collecting Office according to paragraph 9 shall be made to the International Bureau in a format agreed between the collecting Office and the International Bureau. The notification shall contain sufficient information to make clear the relevant international application and the type of fee paid and shall preferably be made using XML conforming to a DTD published for the purpose in Appendix I to Annex F. 11. In the case where an overpayment has been received, the fee shall be promptly notified as having been paid in the proper amount, without waiting for any refunds to be made.


133

Notification to the Beneficiary Office by the International Bureau 12. Where a notification under Rule 96.2(b) relates to a fee for a beneficiary Office other than the International Bureau, the International Bureau shall promptly inform the Office concerned. Where the search copy is transmitted to the International Searching Authority by the International Bureau on behalf of the receiving Office, information that the search fee has been paid may take the form of the transmission of the search copy and, where necessary, be delayed until the other requirements for such transmission have been met. III.2 TRANSMISSION OF INFORMATION BY PARTICIPATING OFFICES TO THE

INTERNATIONAL BUREAU CONCERNING MONTHLY OR OTHER PERIODIC FEE TRANSFERS

Transmission of fee transfer information by the Collecting Office 13. A participating collecting Office shall establish and transmit to the International Bureau, in accordance with the common timetable, a list of: (a) the fees collected by that Office in the course of the preceding month or other agreed interval, which are to be paid to the International Bureau or to be transferred via the International Bureau for the benefit of another Office; and (b) corrections and omissions relating to fees transferred, or which should have been transferred, in previous months. 14. The list shall be in a format agreed between the collecting Office and the International Bureau. The list shall contain sufficient information to validate the amounts to be transferred and shall preferably be made using XML conforming to the DTD published for the purpose in Appendix I of Annex F. Differences in Fees Received by International Searching Authorities from Non-Participating Offices 15. Any participating International Searching Authority that receives search fees directly from receiving Offices in a prescribed currency different from the fixed currency shall, at agreed intervals, establish and transmit to the International Bureau a list of the amounts of fees received in the prescribed and fixed currencies in a format agreed between the Authority and the International Bureau, sufficient to determine the difference due to the International Bureau or to the International Searching Authority in accordance with Rule 16.1(e). 16. The Authority shall also submit documentation agreed with the International Bureau showing the amounts transferred in the prescribed currency, the date, the exchange rate applied and the amount received in the fixed currency. III.3 CHECKING OF FEE INFORMATION RECEIVED 17. The International Bureau shall check the fee information received in accordance with paragraphs 9, 13 and 15 against the information it holds in its databases with regard to the international applications concerned and confirm to that Office that the information it has received is consistent. In case of differences that require reconciliation, the International Bureau shall contact the participating Office. Where possible, any required corrections shall be made to the relevant notifications and lists in time to be reflected in the transmission of fees in the month following their receipt by the collecting Office.


134

III.4 CORRECTION OF ERRORS AND OMISSIONS 18. Any errors or omissions discovered in the information transmitted concerning fees collected by one Office for the benefit of another to be transferred through the WIPO Fee Transfer Service shall be notified promptly to the International Bureau. The International Bureau shall promptly inform any other Office to which the erroneous information has been transmitted, including notifying the beneficiary Office of any corrections required to amounts that have already been transferred to that Office. Where the error is discovered too late to correct the lists on which the transfers of fees are based during the same month, the correction shall be included in the lists and transfers to be made the following month. III.5 CALCULATION OF AMOUNTS TO BE TRANSFERRED VIA THE

INTERNATIONAL BUREAU; TRANSFER OF FEES VIA THE INTERNATIONAL BUREAU

III.5.1 Fee Transfers to the International Bureau Not Subject to Netting 19. Where a fee transfer referred to in paragraph 3, above, is not subject to netting, the collecting Office shall transfer the amount indicated in the list transmitted according to paragraph 13, above, no later than the date set in the common timetable for the purpose. The collecting Office shall bear all bank charges, if any, for this transfer. III.5.2 Fee Transfers from the International Bureau Not Subject to Netting 20. Where a fee transfer referred to in paragraph 3, above, is not subject to netting, the International Bureau shall transmit a list of the fees to be transferred to the beneficiary Office and transfer the total amount indicated in that list no later than the dates set in the common timetable for those purposes. The International Bureau shall bear all bank charges, if any, for this transfer. III.5.3 Fee Transfers Subject to Netting 21. Where the agreement between a participating Office and the International Bureau has specified under paragraph 5, above, that fee transfer shall be subject to netting, the International Bureau shall establish and transmit each month, to that participating Office (“netting office”), no later than the date set in the common timetable, a netting statement comprising: (i) a list of the fees collected by other Offices for the benefit of the netting Office; (ii) a list of the fees collected by the netting Office for the benefit of other Offices; and (iii) an indication of the net amount in favor of the netting Office or of the International Bureau. 22. Where the net amount indicated on a netting statement is in favor of the participating Office, the International Bureau shall transfer the net amount to the netting Office no later than the date set in the common timetable. The International Bureau shall bear all bank charges, if any, for this transfer. 23. Where the net amount indicated on a netting statement is in favor of the International Bureau, the netting Office shall transfer the net amount to the International Bureau, no later than the date set in the common timetable. The participating Office shall bear all bank charges, if any, for this transfer.


135

III.5.4 Transfer of Fees Not Included in the WIPO Fee Transfer Service 24. Any fee transfer between a collecting Office and a beneficiary Office that is not included in the WIPO Fee Transfer Service, despite one or other Office being a participating Office, shall be carried out in accordance with paragraph 25, below.

IV. TRANSFER OF FEES BY OR TO OFFICES NOT PARTICIPATING IN THE WIPO FEE TRANSFER SERVICE

25. Where either a collecting Office or the corresponding beneficiary Office has not agreed to participate in the WIPO Fee Transfer Service (“non-participating Office”), the transfer, where applicable, of: (a) international filing fees under Rule 15.2(c) or (d) collected by the Office in its capacity as a receiving Office for the benefit of the International Bureau; (b) search fees under Rule 16.1(c) or (d) collected by the Office in its capacity as a receiving Office for the benefit of a non-participating Office in its capacity as an International Searching Authority; (c) supplementary search fees under Rule 45bis.3(b) collected by the International Bureau for the benefit of the non-participating Office in its capacity as an Authority specified for supplementary search; (d) handling fees under Rule 57.2(c) or (d) collected by the Office in its capacity as an International Preliminary Examining Authority for the benefit of the International Bureau; and (e) differences under Rule 16.1(e) relating to search fees received by the Office in its capacity as an International Searching Authority; shall be carried out promptly in accordance with Rule 15.2(c) or (d), Rule 16.1(c) or (d), Rule 45bis.3(b), Rule 57.2(c) or (d), or Rule 16.1(e), as applicable, preferably in accordance with a monthly time table for such transfers agreed between the Offices concerned and/or the International Bureau. The Office carrying out the transfer shall bear all bank charges, if any, for the transfer of the fees referred to in paragraphs (a), (b) and (d) and, where the difference belongs to the International Bureau, paragraph (e), whereas the International Bureau shall bear all bank charges, if any, for the transfer of the fees referred to in paragraph (c) and, where the difference belongs to the Office in its capacity as an International Searching Authority, paragraph (e).


136


JP Japan

Agreement between the Japan Patent Office and the International Bureau of the World Intellectual Property Organization2 – Amendment to Annex A

The Japan Patent Office (JPO) has notified the International Bureau, in accordance with Article 11(3)(i) of the above-mentioned Agreement, of amendments to Annex A(ii) thereof. These amendments, which will enter into force on 1 July 2020, consist of changes concerning the languages it will accept for international applications filed with various receiving Offices, or with an Office or the International Bureau acting for various receiving Offices.

As from 1 July 2020, Annex A will read as follows:



(i) [No change]

(ii) the following languages which it will accept: (a) for international applications filed with the receiving Office of Japan: Japanese, English;

(b) for international applications filed with the receiving Office of Brunei Darussalam, Cambodia, Indonesia, Malaysia, Philippines, Singapore, Thailand, United States of America and Viet Nam:

English;

(c) for international applications filed with the receiving Office of, or acting for, the Republic of Korea:

Japanese;

(d) for international applications filed with the International Bureau as receiving Office acting for Brunei Darussalam, Cambodia, Indonesia, Japan, Lao People’s Democratic Republic, Malaysia, Philippines, Singapore, Thailand, United States of America and Viet Nam:

Japanese, English.

2 Available on the WIPO website at: www.wipo.int/pct/en/texts/agreements/ag_jp.pdf.


137


Agreement between the Korean Intellectual Property Office and the International Bureau of the World Intellectual Property Organization3 – Amendment to Annexes A and D

The Korean Intellectual Property Office has notified the International Bureau, in accordance with Article 11(3)(i) and (iii) of the above-mentioned Agreement, of an amendment to Annexes A and D thereof. These amendments, which will enter into force on 1 July 2020, consist of the addition of the Lao People’s Democratic Republic to the States indicated in item (i) of Annex A and in item (4) of Part II of Annex D.

As from 1 July 2020, Annexes A and D will read as follows:



(i) the following States for which it will act:

so far as Article 3(1) is concerned: Republic of Korea, Australia, Brunei Darussalam, Cambodia, Chile, Colombia, Indonesia, Lao People’s Democratic Republic, Malaysia, Mexico, Mongolia, New Zealand, Peru, Philippines, Saudi Arabia, Singapore, Sri Lanka, Thailand, United Arab Emirates, United States of America and Viet Nam;

so far as Article 3(2) is concerned: Republic of Korea, Australia, Brunei Darussalam, Cambodia, Chile, Colombia, Indonesia, Lao People’s Democratic Republic, Malaysia, Mexico, Mongolia, New Zealand, Peru, Philippines, Saudi Arabia, Singapore, Sri Lanka, Thailand, United Arab Emirates, United States of America and Viet Nam. Where a receiving Office specifies the International Authority under Articles 3(1) and (2), the International Authority shall become competent for international applications filed at that receiving Office from a date to be agreed by the receiving Office and International Authority and to be notified to the International Bureau.

(ii) [No change]

3 Available on the WIPO website at: www.wipo.int/pct/en/texts/agreements/ag_kr.pdf.


138

Annex D Fees and Charges

Part I. Schedule of fees and charges

[No change]

Part II. Conditions for and Extent of Refunds or Reductions of Fees


(4) Where the applicant or, if there are two or more applicants, each applicant, is a national of, and has a residence or business domicile in, one of the following States, the amount of the search fee to be paid is reduced by 75%: Cambodia, Colombia, Indonesia, Lao People’s Democratic Republic, Malaysia, Mexico, Mongolia, Peru, the Philippines, Sri Lanka, Thailand, Viet Nam.


RECEIVING OFFICES

LA Lao People’s Democratic Republic IB International Bureau of WIPO

The Department of Intellectual Property, Ministry of Science and Technology (Lao People’s Democratic Republic) has specified the Korean Intellectual Property Office – in addition to the China National Intellectual Property Administration (CNIPA), European Patent Office (EPO), and Japan Patent Office (JPO) – as competent International Searching and Preliminary Examining Authority for international applications filed with the International Bureau of WIPO (in its capacity as receiving Office) by nationals and residents of the Lao People’s Democratic Republic, with effect from 1 July 2020.

[Updating of Annex C(IB) of the PCT Applicant’s Guide]


139

EXCUSE OF DELAY UNDER PCT RULE 82quater.2: NOTIFICATIONS BY OFFICES AND AUTHORITIES UNDER SECTION 111(c) OF THE ADMINISTRATIVE INSTRUCTIONS UNDER THE PCT

During its fifty-first (22nd ordinary) session, held in Geneva from 30 September to 9 October 2019, the Assembly of the International Patent Cooperation Union (PCT Union) unanimously adopted, among others, Rule 82quater.24 of the PCT Regulations concerning the excuse of delay in meeting certain time limits due to the unavailability of electronic means of communication at an Office. This new rule will enter into force on 1 July 2020.

As a result of the adoption of Rule 82quater.2, Section 111 of the Administrative Instructions under the PCT is amended, also from 1 July 2020, so as to require any Office providing for the excuse of delays under Rule 82quater.2 to notify the International Bureau of the existence of such provisions, so that the International Bureau can publish the information in the Official Notices (PCT Gazette) and make applicants aware of the availability of potential remedies.

SE Sweden

In accordance with Section 111(c) of the Administrative Instructions under the PCT, which will enter into force on 1 July 2020, the Swedish Patent and Registration Office has notified the International Bureau that pursuant to PCT Rule 82quater.2, it will excuse a delay in meeting a time limit fixed in the PCT Regulations for performing an action before it that is caused by the unavailability of permitted electronic means of communications at that Office, provided that the duration of such unavailability is at least 24 hours and that the respective action is performed on the next working day on which the said electronic means of communication became available.

4 Available on the WIPO website at: https://www.wipo.int//pct/en/texts/